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Contents of the LVP.TXT file


Plaintiff )
) NO. 87-76-K
Defendants )

June 28, 1990


I.A Background Statement About Computers, Computer
Programs, and Copyrightability . . . . . . . . . 4

II.Constitutional Constraints . . . . . . . . . . . . . . . 13

III.Congressional Mandates and Judicial Interpretation . . . . 14
A. Sources of Guidance . . . . . . . . . . . . . . . 14
1.Precedent on Determining Statutory Meaning 14
2.The Statutory Language and the History
of Amendments . . . . . . . . . . . . . . 15
a. Pre-1976 Legislation . . . . . . . 15
b.The Copyright Act of 1976 . . . . 17
c.CONTU and the 1980 Amendments . . 21
3.Relevant Aspects of the Whole Law of
Copyright . . . . . . . . . . . . 25
a. "Nonliteral" Expression . . . . . . . 25
b. "Useful Articles" . . . . . . . . . . 27
4.The Objects and Policies of Copyright Law 28
B.The Idea-Expression and Useful-Expressive
Distinctions . . . . . . . . . . . . . . 31

IV.The Legal Test for Copyrightability Applicable to
This Case . . . . . . . . . . . . . . . . . . . . 34
A. Functionality, Useful Articles, and the
Useful-Expressive Distinction . . . . . . . . . . 34
B.The Idea-Expression Riddle: Four Additional
Concepts . . . . . . . . . . . . 44
C.Elements of the Legal Test for Copyrightability . 47
D.Incentives and the Role of Advocacy . . . . . . . 52 2

V.Application of the Legal Test to Lotus 1-2-3 . . . . . . 54
A. "Look and Feel" . . . . . . . . . . . . . . . . . . . 54
B.The User Interface . . . . . . . . . . . . . . . . 57
C.Elements of the User Interface as Expression . . . 61

VI.Copying of Lotus 1-2-3 . . . . . . . . . . . . . . . . . 69

VII.A Postscript on the Nature of Decisionmaking in
This Case . . . . . . . . . . . . . . . . . . . . . . . . 76
A.Policy Arguments and Limitations on the Role
of Courts . . . . . . . . . . . . . . . . . . . . 76
B.Strained Analogies and Word Games . . . . . . . . 77
C.Policy Arguments for Bright-Line Rules . . . . . . 81
D.Opinion Evidence and Premises of Legal Rulings . . 83
E. Defendants' Policy Arguments Founded On the
OTSOG Principle . . . . . . . . . . . . . 91

VIII.Other Defenses . . . . . . . . . . . . . . . . . . . . . . . 98
A. Lack of Subject Matter Jurisdiction . . . . . . . 98
B.Laches and Equitable Estoppel . . . . . . . . . . 104

IX.Reserved Rulings on Objections . . . . . . . . . . . . . 108

ORDER . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 109

Appendices . . . . . . . . . . . . . . . . . . . . . . . . . . . . 111

KEETON, District Judge.
The expression of an idea is copyrightable. The idea
itself is not. When applying these two settled rules of law, how
can a decisionmaker distinguish between an idea and its expression?
Answering this riddle is the first step -- but only the
first -- toward disposition of this case in which the court must
decide, among other issues, (1) whether and to what extent
plaintiff's computer spreadsheet program, Lotus 1-2-3, is
copyrightable, (2) whether defendants' VP-Planner was, on
undisputable facts, an infringing work containing elements
substantially similar to copyrightable elements of 1-2-3, and (3)
whether defendants' proffered jurisdictional and equitable
defenses are meritorious.
Phase One of this case was tried to the bench. By
agreement of the parties, in Phase One, the court shall
resolve all legal and factual issues concerning
the liability, if any, of defendants . . . for
the claims of copyright infringement brought by
plaintiff . . . and all defenses thereto,
including but not limited to all factual and
legal issues concerning the copyrightability of
Lotus' Works [1-2-3, releases 1.0, lA, and
2.0], and excluding only: (1) issues of fact,
if any, requiring jury determination concerning
defendants' alleged copying of any protected
expression from Lotus' Works in Defendants'
Works [VP-Planner and VP-Planner Plus]; [and]
(2) factual issues concerning defendants'
possible copying of the source or object code
for Lotus' Works. . . .

Stipulation and Order Regulating Phased Trial, I(A) (Docket No.
This Opinion sets forth findings of fact and conclusions
of law that are central to deciding this controversy. Fed. R. Civ.
P. 52(a). The court adopts, as additional findings, all proposed
findings to which no party objected. See Docket Nos. 250, 251.
The outcome of this case depends on how this court, and
higher courts on appeal, should answer a central question about the
scope of copyrightability of computer programs. For the reasons
explained in this Opinion, I conclude that this question must be

1This case was originally consolidated with Lotus Development
Corporation v. Mosaic Software, Civil Action No. 87-74-K, which
involves Mosaic's computer spreadsheet program The Twin. Although
Phase One of this case was intended to resolve certain additional
legal and factual issues concerning the liability of Mosaic
Software for plaintiff's claims of copyright infringement, that
case was severed on the second day of this first phase of trial for
reasons not here relevant. See Docket No. 174 (February 8, 1990).

resolved in favor of the plaintiff, Lotus.


Though their influence in our society is already
pervasive, digital computers -- along with computer "programs" and
"user interfaces" -- are relatively new to the market, and newer
still to litigation over "works" protected by intellectual property
Digital computers (hereinafter referred to as
"computers") are machines currently used to perform three types of
functions electronically: (1) arithmetic calculations; (2) logical
operations (e.g., comparing values to determine whether one is
larger); and (3) storage and display of the results. Because
computers can perform millions of operations of these types in a
single second, they can be used to solve problems too complex, or
too repetitious and boring, to be solved manually. Developments to
the current state of the art have already transformed many areas of

business, educational, and recreational activity, and they support
speculations about more striking achievements in the future.
A personal computer system consists of hardware and
software. The hardware includes the central processing unit
("CPU"), which contains the electronic circuits that control the
computer and perform the arithmetic and logical functions, the
internal memory of the computer ("random access memory," or "RAM"),
input devices such as a keyboard and mouse, output devices such as
a display screen and printer, and storage devices such as hard and
floppy disk drives. The software includes one or more computer
programs, usually stored magnetically on hard or floppy disks,
along with such items as instruction manuals and "templates," which
are pieces of plastic that fit around the function keys on the
keyboard, identifying the specific functions or commands that can
be invoked by those keys. A personal computer system can also
include "firmware," or "microcode":
Microcode is a set of encoded instructions . .
. that controls the fine details of the
execution of one or more primitive functions of
a computer. Microcode serves as a substitute
for certain elements of the hardware circuitry
that had previously controlled that function.

Samuelson, CONTU Revisited: The Case Against Copyright Protection
for Computer Programs in Machine-Readable Form, 1984 Duke L.J. 663,
Computer programs are, in general, divided into two
types: operating system programs and application programs.
Operating system programs -- such as DOS, XENIX, and OS/2 are
programs that control the basic functions of the computer hardware,
such as the efficient utilization of memory and the starting and
stopping of application programs. Application programs are
programs that permit a user to perform some particular task such as
word processing, database management, or spreadsheet calculations,

or that permit a user to play video games.
This case concerns two competing application programs --
Lotus 1-2-3 and VP-Planner -- which are primarily spreadsheet
programs, but which also support other tasks such as limited
database management and graphics creation. Programs such as these,
because they can perform several different kinds of tasks, are
called "integrated" application programs.
Congress has defined "computer program" as follows:
A "computer program" is a set of statements or
instructions to be used directly or indirectly
in a computer in order to bring about a certain

17 U.S.C. 101 (1988). This "set of statements or instructions,"
in its literal or written manifestation, may be in the form of
object code or source code. It may also be represented, in a
partially literal manifestation, by a flowchart. A copyrightable
work designed for use on a computer may include, as well, text that
appears, for example, in a problem manual or a manual of
instructions. These elements of text, however, ordinarily are not
referred to in the industry as part of a "computer program" unless
they appear on the computer screen and serve a purpose like that of
the components of a "help screen" available to a user whenever
needed. Elements of this textual type are not at issue in this
phase of this case.
Computer programs are typically written in some form of
computer programming "language." The "lowest"-level computer
programming language is machine language, which is a binary
language written in "bits" (BInary digiTS). Each bit is equal to
one binary decision -- that is, to the designation of one of two
possible and equally likely values, such as an "on"-"off" or "yes"-
"no" choice. These binary decisions, the only kind that a typical 7
computer can understand directly, are commonly represented by O's
and l's. A sequence of eight bits (which allows 256 unique
combinations of bits) is commonly called a "byte" ("by eight"), and
1024 bytes form a "kilobyte" (commonly referred to as "K," e.g.,
sixty-four kilobytes is "64K"). Machine language may also be
represented in hexadecimal form, rather than in binary form, by the
characters 0-9 and A-F, where "A" represents 10, "B" represents 11,
and so on through "F," which represents "15." In hexadecimal
machine language, only two rather than eight characters are
required to allow for 256 unique combinations (e.g., 37 instead of
00110111, each of which represents the 55th of 256 combinations; 7B
instead of 01111011, each of which represents the 123rd of 256
combinations; EA instead of 11101010, each of which represents the
234th of 256 combinations). The computer is able to translate
these hexadecimal instructions into binary form. Other versions of
machine language are represented in decimal (0-9) and octal (0-7)
An object program, or object code, is a program written
in machine language that can be executed directly by the computer's
CPU without need for translation. For example, in the machine
language of a certain computer, the instructions to divide the
value in "B" by the value in "C" and add that number to the value
in "A" may be represented by the following sequence of instructions
(in binary form):
0010000000010001; 1000000011010010; 1101000000010000.
An "intermediate"-level programming language is assembly8
language. Rather than in bits, assembly code is written in simple
symbolic names, or alphanumeric symbols, more easily understandable
by human programmers. For example, the calculation described above
may be represented, in the assembly language of a certain computer,
as follows:
Because of the primitive nature of assembly language, even
relatively simple computations can require long and complex
During the early period of computing, "programmers"
ordinarily wrote programs exclusively in machine language. Today,
object code is rarely written directly by computer programmers.
Rather, modern programmers typically write computer programs in a
"higher"-level programming language. These programs are called
source programs, or source code. Although "source code" has been
defined far more broadly in some of the literature in the field,
and in some of the expert testimony in this case, more commonly the
term "source code" refers to a computer program written in some
programming language -- such as FORTRAN (FORmula TRANslation),
COBOL (COmmon Business Oriented Language), Pascal, BASIC, or C --
that uses complex symbolic names, along with complex rules of
syntax. In a typical higher-level programming language, for
example, the above-described computation that is, (A)+(B/C) --
might be represented as follows:
Unlike machine language, which is unique to each kind of9
CPU and which is executed directly by the computer, source code
programming languages are universal to almost all computers. As a
consequence, source code is executed indirectly. Thus, a program
written in source code must be translated into the appropriate
object code for execution in one type of computer, and into a
different object code for execution in another type of computer.
The translation can be effectuated by an "interpreter" program or
by a "compiler" program. An "interpreter" program is a
simultaneous translator that works in conjunction with the
application program every time the application program is run,
carrying out the instructions of the program one step at a time.
In contrast, a "compiler" program translates the program once and
for all into machine language, after which the translated program
can be executed directly by the CPU without the need for any
further resort to the compiler. A distinctive "interpreter" or
"compiler" program is available for each type of source code
programming language and each type of CPU.
A partly literal and partly pictorial manifestation of a
computer program, still farther removed from direct use with the .
computer, is the flowchart. A flowchart is a graphic
representation of a computer program that is written in symbols,
rather than in bits or symbolic names, and with a syntax that is
graphic rather than grammatical. See, e.g., Breyer, The Uneasy
Case for Copyright: A Study of Copyright in Books. Photocopies. and
Computer Programs, 84 Harv. L. Rev. 281, 341 n.235 (1970)
(providing simple flowchart). A flowchart can be thought of as a10
kind of symbolic outline or schematic representation of a computer
program's logic, which is written by a programmer once he or she
has a conceptualization of the goals of the program. Creating a
flowchart (at least, an early draft) is thus, typically, an early
phase in the development of a software system, which is followed by
the translation of the flowchart into source code. See Menell, An
Analysis of the Scope of Copyright Protection for Application
Programs. 41 Stan. L. Rev. 1045, 1051 (1989) (identifying five
stages in the development of most application programs: (1)
defining the desired task; (2) flowcharting; (3) encoding; (4)
debugging; and (5) preparing documentation). On computers and
computer programs in general, see Lewis Affidavit, 18-42 (Docket
No. 274); Galler Declaration, 8-20 (Docket No. 257); A. Clapes,
Software. Copyright & Competition: The "Look and Feel" of the Law
47-64 (1989); R. Bradbeer, P. DeBono & P. Laurie, The Beginner's
Guide to Computers (1982); McGraw-Hill Dictionary of Scientific and
Technical Terms (3d ed. 1984).
The parties agree, as a general proposition, that literal
manifestations of a computer program -- including both source code
and object code -- if original, are copyrightable. Stern
Electronics Inc. v. Kaufman, 669 F.2d 852, 855 n.3 (2d Cir. 1982)
("written computer programs are copyrightable as literary works");
Williams Electronics Inc. v. Artic International. Inc., 685 F.2d
870, 876-77 (3d Cir. 1982) (object code copyrightable); Hubco Data
Products. Corp. v. Management Assistance Inc.. 219 U.S.P.Q. 450,
454 (D. Id. 1983) (same); Apple Computer. Inc. v. Franklin Computer11
Corp., 714 F.2d 1240, 1243 (3d Cir. 1983) (source and object code
copyrightable), cert. dismissed, 464 U.S. 1033 (1984); GCA Coro.
v. Chance. 217 U.S.P.Q. 718, 720 (N.D. Cal. 1982) (same); Midway
Manufacturing Co. v. Strohon, 564 F. Supp. 741, 750 (N.D. Ill.
1983) (same); Digital Communications Associates. Inc. v. Softklone
Distributing Corp., 659 F. Supp. 449, 454 (N.D. Ga. 1987) (same).
Also, it appears that flowcharts, if sufficiently detailed and
original, are entitled to copyright protection:
Flowcharts . . . are works of authorship in
which copyright subsists, provided they are the
product of sufficient intellectual labor to
surpass the "insufficient intellectual labor
hurdle". . . .

National Commission on New Technological Uses of Copyrighted Works,
Final Report and Recommendations 43 (1978) (hereinafter "Final
Report"), reprinted in 5 Copyright. Congress and Technology: The
Public Record (N. Henry, ed. 1980), cited with approval in Whelan
Associates. Inc. v. Jaslow Dental Laboratory. Inc., 797 F.2d 1222,
1241 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987). See also
Synercom Technology. Inc. v. University Computing Co.. 462 F. Supp.
1003, 1013 n.5 (N.D. Tex. 1978) (although taking a very narrow view
of the scope of copyrightability of nonliteral elements of computer
programs, court nevertheless noted in obiter dictum that "it would
probably be a violation to take a detailed description of a
particular problem solution, such as a flowchart . . . and program
such a description in computer language") (Higginbotham, J.); Data
Crash Systems. Inc. v. JS&A Group. Inc., 480 F. Supp. 1063, 1067
n.4 (N.D. Ill. 1979) (holding that copyright protection extends "to
computer programs in their flow chart, source and assembly phases
but not in their object phase," court concluded that computer
program written in object code was not copyrightable), aff'd on
other grounds, 628 F.2d 1038 (7th Cir. 1980) (program at issue not
copyrightable because publication without notice forfeited any
copyright protection); Williams v. Arndt, 626 F. Supp. 571, 578 (D.
Mass. 1985) (violation to take detailed prose description and
program such description in source code).
Defendants vigorously dispute, however, the
copyrightability of any nonliteral elements of computer programs.
That is, defendants assert that only literal manifestations of
computer programs are copyrightable. Plaintiff, on the other hand,
maintains that copyright protection extends to all elements of
computer programs that embody original expression, whether literal
or nonliteral, including any original expression embodied in a
program's "user interface."
One difficulty with plaintiff's argument is the amorphous
nature of "nonliteral" elements of computer programs. Unlike the
written code of a program or a flowchart that can be printed on
paper, nonliteral elements -- including such elements as the
overall organization of a program, the structure of a program's
command system, and the presentation of information on the screen -
- may be less tangibly represented. Whether these elements are
copyrightable, and if so, how the nonliteral elements that are
copyrightable may be identified, are central to deciding this case.

In considering the legal issues relevant to whether
nonliteral elements of Lotus 1-2-3 are copyrightable, and if so, to
what extent, one may appropriately begin with a provision of the
Constitution of the United States:
The Congress shall have Power . . . To promote
the Progress of Science . . . by securing for
limited Time to Authors . . . the exclusive
Right to their . . . Writings. . . .

U.S. Const., Art. I, 8, cl. 8. The copyright law, codified in
Title 17 of the United States Code, rests upon this explicit grant
of legislative authority.
Under this constitutional mandate, Congress has broad
though not unlimited authority to grant copyright monopolies as
needed to promote progress. If Congress were to determine, for
example, that copyright protection is unnecessary to "promote the
Progress of" computer programming -- because, for example, in
Congress' view the financial incentives alone of developing new
computer programs (without the added benefit of copyright) are
enough to encourage innovation, or because incremental innovation
might be stifled by expansive copyright protection -- then Congress
could, without offending the Constitution, provide no copyright
protection for computer programs. At the other extreme, were
Congress to find that strong copyright protection is necessary to
promote the progress of computer programming, Congress could
provide for expansive copyright protection for all aspects of
computer programs, again without having strayed beyond the bounds14
of the constitutionally permissible.
Because the constitutional grant of power authorizes
Congress to take either path -- or to chart some middle course --
this case does not raise constitutional issues. Rather, the issues
at stake here are issues of statutory meaning. The central
question is not whether Congress could render nonliteral elements
such as those of 1-2-3 copyrightable, but whether it has done so.
Banks v. Manchester. Ohio, 128 U.S. 244, 252 (1888) ("No authority
exists for obtaining a copyright beyond the extent to which
Congress has authorized it. A copyright cannot be sustained as a
right existing at common law; but, as it exists in the United
States, it depends wholly on the legislation of Congress.").
A. Sources of Guidance
1. Precedent on Determining Statutory Meaning
In Kelly v. Robinson. 479 U.S. 36 (1986) (Powell, J.,
joined by Rehnquist, C.J., and Brennan, White, Blackmun,
O'Connor, and Scalia, JJ.), the Supreme Court explained the various
sources of guidance to which a court should look in determining the
manifested meaning of a statute and the manifestations of
congressional intent:
[T]he "starting point in every case involving
construction of a statute is the language
itself." Blue Chip Stamps v. Manor Drug
Stores, 421 U.S. 723, 756 (1975) (Powell, J.,
concurring). But the text is only the starting
point. As Justice O'Connor explained last
Term, "'"In expounding a statute, we must not
be guided by a single sentence or member15

of a sentence, but look to the provisions of
the whole law, and to its object and policy."'"
Offshore Logistics. Inc. v. Tallentire, 477
U.S. 207, 221 (1986) (quoting Mastro Plastics
Coro. v. NLRB, 350 U.S. 270, 285 (1956) (in
turn quoting United States v. Heirs of
Boisdor, 8 How. [49 U.S.] 113, 122 (1850))).

Id. at 43. Accordingly, to determine whether Congress has extended
copyright protection to nonliteral elements of computer programs,
and if so, to what extent, a court must examine, first, the
relevant language of the copyright statutes, second, "the
provisions of the whole law," and third, "its object and policy."
Examination of these sources exposes mandates
inconsistent with the principal argument advanced by defendants --
that copyright protection extends only to literal manifestations of
computer programs and not to any nonliteral elements. Close
examination also discloses that Congress has not explicitly
addressed some of the questions that must be decided in this case.
In these circumstances, it is appropriate to consider legislative
history as well as statutory text.
2. The Statutory Language and the History of Amendments
a. Pre-1976 Legislation
The First Congress extended copyright protection to "any
map, chart, book or books already printed." Act of May 31, 1790,
ch. 15, 1, 1 Stat. 124, 124 (repealed 1831). Congress quickly
expanded this limited scope of copyright protection, adding
designs, prints, etchings and engravings in 1802, "musical
composition" in 1831, "dramatic composition" in 1856, "photographs16
and the negatives thereof" in 1865, and "statuary" and "models or
designs intended to be perfected as works of the fine arts" in
1870. Act of Apr. 29, 1802, ch. 36, 2, 2 Stat. 171, 171, repealed
by Act of Feb. 3, 1831, ch. 16, 1, 14, 4 Stat. 436, 436, 439,
amended by Act of Aug. 18, 1856, ch. 169, 11 Stat. 138, 139,
amended by Act of Mar. 3, 1865, ch. 126, 1, 2, 13 Stat. 540, 540,
repealed by Act of July 8, 1870, ch. 180, 86, 16 Stat. 198, 212
(repealed 1909).
In 1909, Congress abandoned the effort to list
exhaustively all works in which copyright may subsist, instead
adopting a more generalized approach to copyrightability:
The works for which copyright may be secured
under this title shall include all the writings
of an author.

Act of Mar. 4, 1909, ch. 320, 4, 35 Stat. 1075, 1076 (emphasis
added) (previously codified at 17 U.S.C. 4, reprinted in 17
U.S.C.A. App. 4 (West Supp. 1990); recodified 1947; repealed
1976). To clarify the meaning of "all the writings of an author,"
Congress also provided a non-exclusive list of examples. Id. at
5 (listing the various kinds of works previously entitled to
explicit copyright protection). Even this generalized statement
of the scope of copyrightability along with the explanatory list
proved inadequate. In 1912, Congress added "motion pictures" as a
further example of "all the writings of an author," Act of Aug.
24, 1912, ch. 356, 5(1)-(m), 37 Stat. 488, 488 (previously
codified at 17 U.S.C. 5(1)-(m), reprinted in 17 U.S.C.A. App.
5(1)-(m); recodified 1947; repealed 1976), and in 1972, Congress17
added "sound recordings" to the list, Act of Oct. 15, 1971, Pub.
L. 92-140, l(b), 85 Stat. 391, 391 (previously codified at 17
U.S.C. 5(n), reprinted in 17 U.S.C.A. App. 5(n); repealed 1976).
In 1955, Congress began to consider another major
revision of the copyright law. After twenty years of hearings,
study, debate, and redrafting, that revision was signed into law in
1976. Act of Oct. 19, 1976, Pub. L. 94-553, 90 Stat. 2541
(codified at 17 U.S.C. 101 et seq.). That law -- the Copyright
Act of 1976 -- and the 1980 amendments to the Act provide the
relevant statutory mandates for this case.
b. The Copyright Act of 1976
Like the Copyright Act of 1909, the Copyright Act of 1976
eschews the prescription of an exclusive list of the kinds of works
that are copyrightable:
Copyright protection subsists, in accordance
with this title, in original works of
authorship fixed in any tangible medium of
expression, now known or later developed, from
which they can be perceived, reproduced, or
otherwise communicated, either directly or with
the aid of a machine or device.

17 U.S.C. 102(a) (1988) (emphasis added).

It is axiomatic that the designation "original" is not
intended to be limited to works that are novel or unique. Rather,
the word "original," which was "purposely left undefined" by
Congress, refers to works that have been "independently created by
an author," regardless of their literary or aesthetic merit, or
ingenuity, or qualitative value. H.R. Rep. No. 1476, 94th Cong.,
2d Sess. 51, reprinted at 1976 U.S. Code Cong. & Admin. News 5659, 18
5664 (hereinafter "House Report"); Hutchinson Telephone Co. v.
Fronteer Directory Co., 770 F.2d 128, 131 (8th Cir. 1985); Puddu v.
Buonamici Statuary, Inc., 450 F.2d 401, 402 (2d Cir. 1971)
("originality has been considered to mean 'only that the work owes
its origin to the author'") (emphasis added; quoting Nimmer,
Copyright 10 at 32 (1971 ed.)). See also Bleistein v. Donaldson
Lithographing Co., 188 U.S. 239, 251 (1903) (Holmes, J.) ("It would
be a dangerous undertaking for persons trained only in the law to
constitute themselves final judges of the worth of" a work.).
Also, the designation "works of authorship" is not meant
to be limited to traditional works of authorship such as novels or
plays. Rather, Congress used this phrase to extend copyright to
new methods of expression as they evolve:
The history of copyright law has been one
of gradual expansion in the types of works
accorded protection, and the subject matter
affected has fallen into two general
categories. In the first, scientific
discoveries and technological developments have
made possible new forms of creative expression
that never existed before. In some of these
cases the new expressive forms electronic
music, filmstrips, and computer programs, for
example -- could be regarded as an extension of
copyrightable subject matter Congress had
already intended to protect, and were thus
considered copyrightable from the outset
without need of new legislation. In other
cases, such as photographs, sound recordings,
and motion pictures, statutory enactment was
deemed necessary to give them full recognition
as copyrightable works.

Authors are continually finding new ways
of expressing themselves, but it is impossible
to foresee the forms that these new expressive
methods will take. The bill does not intend

either to freeze the scope of copyrightable
subject matter at the present stage of
communications technology or to allow unlimited
expansion into areas outside the present
congressional intent.

House Report at 51, reprinted at 5664 (emphasis added).

To help illumine the meaning of "works of authorship,"
Congress, as it had done in the 1909 Act, again provided a
statutory list of examples of those kinds of works that, if
original, merit copyright protection:
Works of authorship include the following
categories: (1) literary works; (2) musical
works, including any accompanying words; (3)
dramatic works, including any accompanying
music; (4) pantomimes and choreographic works;
(5) pictorial, graphic, and sculptural works;
(6) motion pictures and other audiovisual
works; and (7) sound recordings.

17 U.S.C. 102(a) (1988). This listing was intended to be
"'illustrative and not limitative,' and . . . the seven categories
do not necessarily exhaust the scope of 'original works of
authorship' that the bill is intended to protect." House Report at
53, reprinted at 5666. Consequently, in addition to these
explicitly-listed items, courts have extended copyright protection
to such works as artistic features of masquerade costumes, National
Theme Productions. Inc. v. Jerry B. Beck. Inc., 696 F. Supp. 1348,
1354 (S.D. Cal. 1988); the arrangement of public-domain legal
decisions in reporters, West Publishing Co. v. Mead Data Central,
Inc., 799 F.2d 1219 (8th Cir. 1986), cert. denied. 479 U.S. 1070
(1987); telephone books, Southern Bell Telephone & Telegraph Co.
v. Associated Telephone Directory Publishers. 756 F.2d 801 (llth
Cir. 1985); televised news reports, Pacific and Southern Co. v.20
Duncan, 744 F.2d 1490, 1494, reh'g denied, 749 F.2d 733 (llth Cir.
1984), cert. denied, 471 U.S. 1004 (1985); blank answer sheets for
use with student achievement and intelligence tests that are
designed to be corrected by optical scanning machines, Harcourt.
Brace & World. Inc. v. Graphic Control Corp., 329 F. Supp. 517
(S.D.N.Y. 1971) (applying the 1909 Act); maps, C.S. Hammond & Co.
v. International College Globe, Inc., 210 F. Supp. 206, 216
(S.D.N.Y. 1962) (applying the 1909 Act); and a code book for cable
correspondence consisting of 6,325 coined, otherwise meaningless,
words of five letters each, Reiss v. National Quotation Bureau.
Inc., 276 F. 717 (S.D.N.Y. 1921) (L. Hand, J.) (applying the 1909
Although Congress did not include "computer programs" in
this list of examples of "works of authorship," computer programs
fall squarely within the statutory definition of literary works:
"Literary works" are works, 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.

17 U.S.C. 101 (1988). See also House Report at 54, reprinted at
5667 ("[t]he term 'literary works' . . . includes . . . computer
programs"); id. at 51, reprinted at 5664 ("computer programs . . .
were . . . considered copyrightable from the outset"); id. at 116,
reprinted at 5731 (1976 Act governs "copyright-ability [sic] of
computer programs").
Like all other works of authorship, however, computer
programs, even if certain elements of them are copyrightable, are
not entitled to an unlimited scope of copyright protection. Most
relevant to this case is the following limitation:
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.

17 U.S.C. 102(b) (1988) (emphasis added). Noting that this
section applies to computer programs, the House Report declares:
"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." House Report at 57, reprinted at 5670 (emphasis
added); see also id. at 54, reprinted at 5667 (computer programs
are copyrightable only "to the extent that they incorporate
authorship in the programmer's expression of original ideas, as
distinguished from the ideas themselves") (emphasis added).
c. CONTU and the 1980 Amendments
Most contemporaneous observers expected that the bill
that eventually became the Copyright Act of 1976 would apply to
computer programs. Toward the end of the twenty-year process of
reconsidering the copyright law, however, Congress recognized that
certain problems raised by computer and other new technologies were
not adequately addressed in the pending bill. See House Report at
116, reprinted at 5731. Accordingly, in 1974, Congress created the22
National Commission on New Technological Uses of Copyrighted Works
("CONTU"). Congress gave the Commission the following mandate:
(b) The purpose of the Commission is to
study and compile data on:

(1) the reproduction and use of
copyrighted works of authorship --

(A) in conjunction with
automatic systems capable of storing,
processing, retrieving, and
transferring information. . . .

(c) The Commission shall make
recommendations as to such changes in copyright
law or procedures that may be necessary to
assure for such purposes access to copyrighted
works, and to provide recognition of the rights
of copyright owners.

Act of Dec. 31, 1974, Pub. L. 93-573, 201(b)-(c), 88 Stat. 1873,
1873-74 (1974).
It took seven months after enactment of the bill to
constitute the Commission and appoint the Commissioners. Because
of this delay, CONTU did not begin its deliberations until October
1975, and did not release its report and recommendations until July
1978, almost two years after the passage of the 1976 Act.
CONTU observed a need for copyright protection of
creative expression embodied in computer programs:
The cost of developing computer programs is far
greater than the cost of their duplication.
Consequently, computer programs . . . are
likely to be disseminated only if . . . [t]he
creator can spread its costs over multiple
copies of the work with some form of protection
against unauthorized duplication of the work. .
. . The Commission is, therefore satisfied that
some form of protection is necessary to
encourage the creation and broad distribution
of computer programs in a competitive market, .
. . [and] that the

continued availability of copyright protection
for computer programs is desirable.

CONTU, Final Report at 20-21. Concluding, however, that the Act of
1976 already provided adequate protection, CONTU did not propose
any statutory changes with respect to copyrightability of computer
programs. On the other hand, CONTU did propose two amendments with
respect to permissible copying of computer programs. These
proposed amendments were subsequently adopted by Congress with only
minor modifications and with little additional legislative history.
First, tracking verbatim CONTU's recommendation, Congress
amended section 101 to include the following definition:
A "computer program" is a set of statements or
instructions to be used directly or indirectly
in a computer in order to bring about a certain

Act of Dec. 12, 1980, Pub. L. 98-9517, 94 Stat. 3007, 3028
(codified at 17 U.S.C. 101). Second, Congress also followed
CONTU's recommendation by amending section 117 to allow the owner
of a computer program to make additional copies or adaptations of
the program:
Notwithstanding the provisions of section
106 [which grants the copyright owner the
exclusive rights to reproduce the copyrighted
work], it is not an infringement for the owner
of a copy of a computer program to make or
authorize the making of another copy or
adaptation of that computer program provided:

(1) that such a new copy or
adaptation is created as an essential step
in the utilization of the computer program
in conjunction with a machine and that it
is used in no other manner, or

(2) that such new copy or adaptation
is for archival purposes only and that

all archival copies are destroyed in the
event that continued possession of the
computer program should cease to be

Any exact copies prepared in accordance
with the provisions of this section may be
leased, sold, or otherwise transferred, along
with the copy from which such copies were
prepared, only as part of the lease, sale, or
other transfer of all rights in the program.
Adaptations so prepared may be transferred only
with the authorization of the copyright owner.

Id. (codified at 17 U.S.C. 117).
Finally, although the Commission did not address
explicitly the central issue of the present case -- whether
copyright protection extends to the nonliteral elements of computer
programs at issue here -- CONTU did re-emphasize, for purposes of
copyrightability of computer programs, the fundamental distinction
between copyrightable expression on the one hand, and non-
copyrightable methods, processes and ideas on the other. Id. at
37-46. Indeed, although his personal views are entitled to very
little if any weight in the context of the court's determination of
the statutory mandates, Whelan. 797 F.2d at 1241, n.37, it is
interesting to note that Melville Nimmer, Vice-Chairperson of
CONTU, testified about the Commission's intent, in Evergreen
Consulting v. NCR Comten. Inc., No. 82-5946-KN (C.D. Cal. filed
1982). According to Nimmer, CONTU understood that the proposed
repeal of former section 117 would extend copyright protection to
nonliteral elements of computer programs:
CONTU had no views, and made no recommendations
which would negate the availability of
copyright protection for the

detailed design, structure and flow of a
[computer] program under the copyright
principles that make copyright protection
available, in appropriate circumstances, for
the structure and flow of a novel, a play or a
motion picture.

Nimmer Decl. in Evergreen Consulting, 28, reprinted in Note, Idea,
Process. or Protected Expression?: Determining the Scope of
Copyright Protection of the Structure of Computer Programs. 88
Mich. L. Rev. 866, 889 (1990). But cf. conflicting views of
Commissioner Arthur Miller and Executive Director Arthur Levine,
discussed in id. at 888-90.
3. Relevant Aspects of the whole Law of Copyright
a."Nonliteral" Expression
With respect to such things as musical, dramatic, and
motion picture works, and works of "literature" (as contrasted with
"literary" works in the broader statutory sense, see Samuelson,
Reflections on the State of American Software Copyright Law and the
Perils of Teaching It, 13 Colum.-VLA J.L. & Arts 61, 65 n.15
(1988)), it is crystal clear that, to the extent original, the
literal manifestations of such works are protected by copyright.
Thus, during a period of copyright protection, one cannot copy an
author's book, score, or script without authorization in law or in
fact. It is also well settled that a copyright in a musical,
dramatic, or motion picture work, or a work of literature, may be
infringed even if the infringer has not copied the literal aspects
of the work. That is, even if an infringer does not copy the words
or dialogue of a book or play, or the score of a musical work,
infringement may be found if there is copying of the work's26
expression of setting, characters, or plot with a resulting
substantial similarity. Nichols v. Universal Pictures Corp., 45
F.2d 119, 121 (2d Cir. 1930) (L. Hand, J.) ("the right cannot be
limited literally to the text, else a plagiarist would escape by
immaterial variations"), cert. denied, 282 U.S. 902 (1931); Sheldon
v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 55 (2d Cir.) (L. Hand,
J.) ("a play may be pirated without using the dialogue"), cert.
denied, 298 U.S. 669 (1936); Detective Comics, Inc., v. Bruns
Publications. Inc., 111 F.2d 432, 433 (2d Cir. 1940) (defendant's
comic book "Wonderman" adjudged to infringe plaintiff's copyright
in the comic book series "Superman" where both comic books' central
characters have miraculous strength and speed; conceal their
strength, along with their skin-tight acrobatic costumes, beneath
ordinary clothing; are termed champions of the oppressed; crush
guns; stop bullets; and leap over or from buildings); Bradbury v.
Columbia Broadcasting System. Inc., 287 F.2d 478, 482-84 (9th Cir.)
(twenty-two nonliteral similarities between plaintiff's Fahrenheit
451 and The Fireman and defendants' television production), cert.
dismissed, 368 U.S. 801 (1961); Roth Greeting Cards v. United Card
Co., 429 F.2d 1106 (9th Cir. 1970) (substantial similarity between
nonliteral expressive elements embodied in defendant's cards and
plaintiff's cards); Sid & Marty Krofft Television Productions. Inc.
v. McDonald's Corp., 562 F.2d 1157 (9th Cir. 1977) (defendant's
television commercial substantially similar in locale, characters,
and plot to plaintiff's children's television series); Twentieth
Century-Fox Film Corp. v. MCA, Inc., 715 F.2d 1327 (9th Cir. 1983)27
(thirteen alleged similarities between plaintiff's motion picture,
Star Wars, and defendant's motion picture and derivative television
series, Battlestar: Gallactica -- including totality of setting,
characters and their relationships, and elements of plot -- were
sufficient to create genuine dispute of material fact to defeat
defendant's motion for summary judgment); Horgan v. Macmillan,
inc., 789 F.2d 157, 162 (2d Cir. 1986) (copyright in choreography
for The Nutcracker ballet may be infringed by a book of photographs
of the ballet if the series of photographs is substantially similar
to the ballet). See also Stewart v. Abend, 110 S. Ct. 1750, 1759
(1990) (noting that a motion picture may infringe a book by using
"the story's unique setting, characters, plot, and sequence of
events"). This type of copying of nonliteral expression, if
sufficiently extensive, has never been. upheld as permissible
copying; rather, it has always been viewed as copying of elements
of an expression of creative originality.
b. "Useful Articles"
A "useful article" is defined by the Copyright Act as
an article having an intrinsic utilitarian
function that is not merely to portray the
appearance of the article or to convey
information. An article that is normally a
part of a useful article is considered a
"useful article."

17 U.S.C. 101 (1988). Such articles -- or more accurately, the
utilitarian aspects of such articles are not works of authorship
in which copyright can subsist. House Report at 55, reprinted at
5668. However:
[T]he design of a useful article .. . shall

be considered a pictorial, graphic, or
sculptural work [which is copyrightable]. . .
if, and only to the extent that, such design
incorporates pictorial, graphic, or sculptural
features that can be identified separately
from, and are capable of existing independently
of, the utilitarian aspects of the article.

17 U.S.C. 101 (1988) (defining "pictorial, graphic, and sculptural
works"). Put more broadly, the point is that those elements of a
useful article that can exist independently of the utilitarian
aspects of the article are potentially copyrightable because those
elements are elements of expression that can be distinguished from
the utilitarian functions of the article. See Whelan, 797 F.2d at
1236 ("the purpose or function of a utilitarian work [is] the
work's idea, and everything that is not necessary to that purpose
or function [is] part of the expression of the idea"); Williams
Electronics. Inc. v. Bally Manufacturing Corp., 568 F. Supp. 1274,
1279-80 (N.D. Ill. 1983) (Congress intended to exclude from
copyright protection functional elements of work, leaving only
those aspects of work separable from utilitarian aspects
4. The Objects and Policies of Copyright Law
The court's final task in divining the statutory mandates
is to look to the "object and policy" of the copyright law. 479
U.S. at 43. This inquiry has received heightened attention in this
case (see Part VII, infra) because defendants contend that
extending copyright protection to nonliteral elements of computer
programs is contrary to the objects and policies of copyright law
as expressed in the copyright statute and in precedents. Although,29
of course, disputing defendants' conclusion, plaintiff does not
contest the premise of this contention -- that in construing the
manifested meaning of the Copyright Act, the court is directed to
look to the "object and policy" of the copyright law.
Copyright monopolies are not granted for the purpose of
rewarding authors. Rather, Congress has granted copyright
monopolies to serve the public welfare by encouraging authors
(broadly defined) to generate new ideas and disclose them to the
public, being free to do so in any uniquely expressed way they may
choose. Harper & Row. Publishers. Inc. v. Nation Enterprises. 471
U.S. 539, 546 (1985). As the Supreme Court has concluded,
"encouragement of individual effort by personal gain is the best
way to advance public welfare through talents of authors and
inventors in 'Science and useful Arts.'" Mazer v. Stein. 347 U.S.
201, 219, reh'g denied, 347 U.S. 949 (1954). See also Sony Corp.
v. Universal City Studios. Inc., 464 U.S. 417, 432 (1984) ("'The
immediate effect of our copyright law is to secure a fair return
for an "author's" creative labor. But the ultimate aim is, by this
incentive, to stimulate artistic creativity for the general public
good.'") quoting Twentieth Century Music Corp. v. Aiken, 422 U.S.
151, 156 (1975)).
In construing the relevant statutory mandates,the court
must be faithful to the statutory language and mindful of both the
ultimate goal of copyright law -- the advancement of public welfare
-- and Congress' chosen method of achieving this goal -- private
reward to the individual author. Courts should not draw the line30
between copyrightable and non-copyrightable elements of computer
programs in such a way as to harm the public welfare, nor should
courts ignore the accommodation struck by Congress in choosing to
advance the public welfare by rewarding authors. These mandates
leave courts with a delicate task:
Drawing the line too liberally in favor of
copyright protection would bestow strong
monopolies over specific applications upon the
first to write programs performing those
applications and would thereby inhibit other
creators from developing improved products.
Drawing the line too conservatively would allow
programmer's efforts to be copied easily, thus
discouraging the creation of all but modest
incremental advances.

Menell, Scope of Copyright Protection for Programs. 41 Stan. L.
Rev. at 1047-48. See also Note, Scope of Copyright Protection of
Computer Program Structure. 88 Mich. L. Rev. at 895; Note, Defining
the Scope of Copyright Protection for Computer Software, 38 Stan.
L. Rev. 497, 498 (1986).
Rather than itself drawing the boundary line between
copyrightable and non-copyrightable elements of computer programs,
Congress has mandated that courts use an evaluative standard in
determining this boundary line -- that is, a standard that
distinguishes idea from expression and requires that a court, in
applying this distinction, be sensitive to the object and policy of
copyright law as manifested by Congress.
When statutes establish evaluative standards for deciding
cases, courts -- by necessity -- must locate boundaries in
unchartered terrain, using the markers that Congress has placed.
At some places a boundary may run straight as a surveyor's sight-31
line between markers; at others, it may meander like a stream,
moving toward resolution of clashing objects and policies the
markers identify. No marker Congress has placed may be disregarded
or relocated by courts. Even in those instances where text and
context make clear that literal description of a marker is contrary
to manifested meaning (as where "not" must be inserted or deleted
to make sense of the statutory language) what the court is doing is
aptly described as "locating," not "relocating," the marker
Congress mandated. The fewer the markers Congress has placed, the
more critical it becomes that courts assure that no marker escapes
B. The Idea-Expression and Useful-Expressive Distinctions
Although the statutory mandates are ambiguous in some
critical respects, one point on which they are clear (one marker of
the boundary line) is this: at least some, but clearly not all,
aspects of computer programs, if original, are "works of
authorship" in which copyright can subsist. 17 U.S.C. 102(a)(l);
House Report at 54, reprinted at 5667; CONTU, Final Report at 21.
How can a court determine which aspects are copyrightable?
The interplay between sections 102(a) and 102(b),
illumined by the related legislative history, manifests that the
statute extends copyright protection to expressive elements of
computer programs, but not to the ideas, processes, and methods
embodied in computer programs. House Report at 54, 57, reprinted
at 5667, 5670. This dichotomy -- which is often referred to as the
"idea-expression distinction," and which embraces also the process32
expression, method-expression, and useful-expressive distinctions,
see Note, Determining the Scope of Copyright Protection of Computer
Program Structure, 88 Mich. L. Rev. at 866-67 -- has long been a
fundamental part of our copyright law. Baker v. Selden, 101 U.S.
99 (1879). In that seminal case, the Court held that the text of a
book describing a special method of double-entry accounting on
paper spreadsheets -- the now almost universal T-accounts system
was copyrightable expression, but that the method itself, which
embodied the idea of this particular kind of double-entry
bookkeeping, was not. The Court thus concluded that Baker did not
infringe Selden's copyright when Baker wrote his own treatise, in
his own words, describing the special double-entry method of
CONTU, too, concluded that the idea-expression
distinction should be used to determine which aspects of computer
programs are copyrightable. CONTU, Final Report at 37-46. The
Commission recognized, though, that "[i]t is difficult, either as a
matter of legal interpretation or technological determination, to
draw the line between the copyrightable element of style and
expression in a computer program and the process which underlies
it." Id. at 44.
CONTU, of course, was not an official voice of Congress,
and its views are not, without more, attributable to Congress.
Thus, courts must not treat the CONTU report as legislative
history, in the ordinary sense, much less as an authoritative
statement about manifested legislative intent. Whelan, 797 F.2d33
at 1241-42. The privately held views of Vice-Chairperson Nimmer
and Commissioner Miller, and especially the privately held views of
Executive Director Levine, see declarations in Evergreen
Consulting. without some manifestation of congressional
endorsement, are even less relevant to the determination of
manifested congressional intent. Id. at 1241 n.37.
Congress, however, did not ignore CONTU. Indeed, as
already noted, Congress adopted practically verbatim the
Commission's proposed statutory changes with respect to computer
programs. Thus, the expressed views of the Commission, to the
extent not repudiated by Congress, may help to explain the context
in which Congress acted, which in turn may support inferences about
the meaning of any otherwise ambiguous passages in what Congress
I conclude that, with the Copyright Act of 1976 and the
1980 amendments to that Act, Congress manifested an intention to
use the idea-expression distinction as part of the test of
copyrightability for computer programs. That is, rather than
adopting some other test of copyrightability that made the idea-
expression dichotomy irrelevant (such as defendants' proposed
literal-nonliteral distinction), Congress chose to extend copyright
protection to original expression embodied in computer programs,
but not to any idea, method, or process described by that
expression. 17 U.S.C. 102(a), 102(b); House Report at 54, 57,
reprinted at 5667, 5670.
That conclusion is consistent with the treatment of other34
kinds of intellectual works -- specifically, with the treatment of
nonliteral elements of expression in musical, dramatic, and motion
picture works, and works of literature. It is also consistent with
the treatment of useful articles. That is, as explained more fully
in Part IV(A), infra, I conclude that the user interface and some
other nonliteral aspects of computer programs are not merely
articles "having an intrinsic utilitarian function." 17 U.S.C.

101 (defining "useful article"). When computer programs include
elements -- both literal and nonliteral -- "that can be identified
separately from, and are capable of existing independently of, the
utilitarian aspects of the article," id. (defining "pictorial,
graphic, and sculptural works"), they are potentially
Finally, this conclusion is also consistent with the
objects and policies of copyright -- to encourage the creation and
dissemination of new ideas by protecting, for limited times, the
specific way that an author has expressed those ideas.


A. Functionality, Useful Articles, and the Useful-Expressive

Defendants suggest that the user interface of Lotus 1-2-3
is a useful, "function[al]" object like the functional layout of
gears in an "H" pattern on a standard transmission, the functional
assignment of letters to keys on a standard QWERTY keyboard, and
the functional configuration of controls on a musical instrument35
(e.g., keys of a piano). Lewis Affdvt. 52-54. These
"functional" "useful articles," defendants contend, are not
entitled to copyright protection.
A similar analogy was made in Synercom where the court
concluded that a sequence of data inputs for a statistical analysis
program was like the "figure-H" pattern of a standard transmission.
462 F. Supp. at 1013. Synercom, though, was published less than a
month after the publication of the CONTU report (which it never
cites) and well before the 1980 amendments. Since then,
congressional and judicial development of the law of
copyrightability of computer programs has advanced considerably,
and Synercom's central proposition -- that the expression of
nonliteral sequence and order is inseparable from the idea and
accordingly is not copyrightable -- has been explicitly rejected by
several courts. E.g., Whelan, 797 F.2d at 1240, 1248 ("copyright
protection of computer programs may extend beyond the programs'
literal code to their structure, sequence, and organization");
Broderbund Software, Inc. v. Unison World. Inc., 648 F. Supp. 1127,
1133 (N.D. Cal. 1986) ("copyright protection is not limited to the
literal aspects of a computer program, but rather . . . it extends
to the overall structure of a program, including its audiovisual
displays"). Moreover, even those courts that have not gone as far
as Whelan and Broderbund have still gone much farther in protecting
computer programs than Synercom. SAS Institute. Inc. v. S & H
Computer Systems. Inc, 605 F. Supp. 816, 830 (M.D. Tenn. 1985)
("copying of the organization and36
structural details" can form basis for infringement); Manufacturers
Technologies. Inc. v. CAMS. Inc., 706 F. Supp. 984, 993 (D. Conn.
1989) ("screen displays or user interface" copyrightable); Johnson
Controls. Inc. v. Phoenix Control Systems. Inc.. 886 F.2d 1173,
1175 (9th Cir. 1989) (nonliteral aspects such as "structure,
sequence and/or organization of the program, the user interface,
and the function, or purpose, of the program," are copyrightable to
the extent that they embody expression rather than idea);
Telemarketing Resources v. Symantec Corp., 12 U.S.P.Q.2d 1991, 1993
(N.D. Cal. 1989) (holding that "[c]opyright protection applies to
the user interface, or overall structure and organization of a
computer program, including its audiovisual displays, or screen
'look and feel,'" but finding no infringement in this case); 0-Co.
Industries v. Hoffman, 625 F. Supp. 608, 615-16 (S.D.N.Y. 1985)
(similarity of "structure and arrangement" can form basis of
infringement suit, but here, structural similarities were dictated
by functional considerations and hence were non-copyrightable ideas
rather than copyrightable expression); Pearl Systems. Inc. v.
Competition Electronics. Inc., 8 U.S.P.Q.2d 1520, 1524 (S.D. Fla.
1988) ("Copyright protection of computer software is not limited to
the text of the source or object code"). But see Softklone, 659 F.
Supp. at 455, 465 (rejecting Broderbund's conclusion that
audiovisual screen displays are copyrightable, although holding
that separate copyright on status screen display was infringed
where "total concept and feel" was copied); Plains Cotton
Cooperative Association v. Goodpasture Computer Service. Inc., 80737
F.2d 1256, 1262 (rejecting Whelan's protection for structure,
sequence, and organization, court instead held that sequence and
organization, where dictated by market forces, is non-copyrightable
idea rather than copyrightable expression), reh'g denied, 813 F.2d
407 (5th Cir.), cert. denied, 484 U.S. 821 (1987). In any event,
Synercom's input formats are quite different from, and
distinguishable from, the nonliteral aspects of 1-2-3 at issue in
this case.
Defendant's proposed analogy is also similar to the
analogy drawn by Commissioner Hersey between a computer program and
an object that is designated to do work -- for example, the cam of
a drill. CONTU, Final Report at 58-60 (Hersey, C., dissenting).
His view, however, was in dissent, and not a view advanced by
CONTU. Because Congress adopted CONTU's recommendations
practically verbatim, it is reasonable to infer that Congress did
not adopt Commissioner Hersey's view.
Moreover, I conclude that defendants' contentions, to the
extent they are similar to Synercom's central proposition and to
Commissioner Hersey's views in dissent, are inconsistent with the .
legislative history and statutory mandates explained above. If, in
a context such as that of Synercom or of this case, an idea and its
expression were taken to be inseparable and the expression
therefore not copyrightable, copyright law never would, as a
practical matter, provide computer programs with protection as
substantial as Congress has mandated -- protection designed to
extend to original elements of expression however embodied. I38
credit the testimony of expert witnesses that the bulk of the
creative work is in the conceptualization of a computer program and
its user interface, rather than in its encoding, and that creating
a suitable user interface is a more difficult intellectual task,
requiring greater creativity, originality, and insight, than
converting the user interface design into instructions to the
machine. See Galler Decl. 37, 39; Emery Decl. 22, 25-28
(Docket No. 265); Reed Decl. 26-27 (Docket No. 290). Defendants'
contentions would attribute to the statute a purpose to protect
only a narrowly defined segment of the creative development of
computer programs, and to preclude from protection even more
significant creative elements of the process. Such a result is
fundamentally inconsistent with the statutory mandates.
Also, defendants' contention would have the additional
consequence that computer programmers would have little, if any,
more protection for nonliteral elements of expression embodied in
their original works of authorship than is already provided by
trade secret law. If the intellectual effort and creativity
embodied in a user interface were protectable only by trade secret
law, the length of protection for computer programs would be very
short -- merely the time it takes to examine a program and then
duplicate the nonliteral elements in a newly written computer
program. This short period of protection is fundamentally
inconsistent with the mandates of the copyright law.
Defendants have advanced their "useful article" (or
"functionality") argument in many forms. Never, however, have they39
stated every premise that is a step of the reasoning implicit in
the argument. One set of unstated premises is the assumed meanings
of "useful," "article," and "useful article." Indeed, different
forms of their argument have depended on different assumed meanings
for one or more of these three terms. Some illustrations will
clarify this point.
Suppose, first, the form of the argument is this:
A "useful article" is not copyrightable; a
"computer program" is an "article," and a good
"computer program" is "useful"; therefore, a
good "computer program" is not copyrightable.

In this illustration, "useful," "article," and "useful article" are
assumed to have meanings consistent with ordinary usage (with an
exception to be noted below). The proposition that emerges when
the words are interpreted in this way is, of course, plainly
contrary to congressional mandates. Congress must have had some
purpose in defining "computer program" and declaring that an "owner
of a copy of a computer program" may make additional copies, in
specified circumstances, without violating copyright laws. 17
U.S.C. 101, 117. The clear implication of the 1980 amendments is
that in some circumstances, at least, a good computer program is
copyrightable. Otherwise, there would have been no need for
Congress to enact these two provisions about a "computer program"
and additional "copies."
It follows that, for this defense argument to make any
sense and also be consistent with congressional mandates,
defendants must be proposing that "useful", or "article," or
"useful article," or all three, be interpreted in some sense40
different from their ordinary meanings. In what sense, though,
they never say.
Suppose, second, a different form of the argument:
A "useful article" is not copyrightable; a
"screen display" is an "article," and a good
"screen display" is "useful"; therefore, a good
"screen display" is not copyrightable.

Here, the implicit meaning of "article" is being stretched beyond
ordinary usage to apply to what one would ordinarily think of as
just one part of an article, rather than itself an article. Also,
the implicit meaning of "article" stretches beyond what one would
ordinarily think of as something that, as part of a larger
"article," is itself an "article." Thus, the implicit meaning of
"article" is broader still than the statutory mandate that "[a]n
article that is normally a part of a useful article is considered a
'useful article.'" 17 U.S.C. 101 (emphasis added). Are these
expansions of the meaning of "article" consistent with the text and
with the object and policy manifested in the statute? We may be
better prepared to answer after considering one more illustrative
form of the argument.
Suppose, third, this form of the argument:
A "useful article" is not copyrightable; a
"user interface" is an "article," and a good
"user interface" is "useful"; therefore, a good
"user interface" is not copyrightable.

Here, the meaning of "article" is plainly stretched beyond ordinary
usage, and especially when we understand "user interface" in a
sense broad enough to include nonliteral elements such as the
command structure. Moreover, unease that we are being led into a41
departure from statutory text and manifested object and policy
grows deeper as we reflect still more on this illustrative form of
the argument.
One problem is that the argument depends on changing the
assumed meaning of one or all of "useful," "article," and "useful
article," to suit the needs of the copier who is advancing the
argument as a defense against a claim of copyright infringement.
An even deeper fallacy of the argument, however, is that
it assumes a meaning of "useful article" in step one ("a 'useful
article' is not copyrightable") that goes far beyond ordinary
meanings of "useful" and "article" combined. That is, not merely
does it assume a descriptive meaning of something that is an
"article" and is also "useful," but in addition it assumes that the
definition of "useful article" includes, as something built into
it, a rule of law: Everything that is a "useful article" in a
descriptive sense is also, by rule of law, not copyrightable, and
under this rule of law, nothing about a "useful article" -- no
element, no aspect, no part of it -- can ever be copyrighted.
Merely to expose this assumed prescriptive meaning of "useful
article," as defendants persistently use the phrase, is to
demonstrate that any argument founded upon this meaning is
fundamentally inconsistent with the mandates of the copyright
It may be quite true, with respect to "useful articles"
indeed I believe it to be so -- that their utilitarian aspects
are not copyrightable, and that things that merely utter work, such42
as the cam of a drill, are not copyrightable. It is not true,
however, that every aspect of a user interface that is "useful" is
therefore not copyrightable. For example, Lotus 1-2-3 is surely
"useful." It does not follow that when an intellectual work
achieves the feat of being useful as well as expressive and
original, the moment of creative triumph is also a moment of
devastating financial loss because the triumph destroys
copyrightability of all expressive elements that would have been
protected if only they had not contributed so much to the public
interest by helping to make some article useful.
Defendants' contention misses this point by proceeding on
an erroneous assumption about the role of "functionality" in
copyright law. It is true that "functionality" of an article does
not itself support copyrightability. Thus, it never strengthens a
claim for copyright to show that the "work" for which copyright
protection is claimed is useful. A congressional mandate that
"proof that an intellectual work is a 'useful article' does not
support the author's claim for copyright" is not, however, a
mandate that "if one who copied the author's work proves that the
work was 'useful' or 'functional,' the author loses all copyright
protection." Transforming a mandate that "proof of usefulness does
not strengthen a copyright claim" to a mandate that "proof of
usefulness destroys a copyright claim" is, to say the least, a
remarkable intellectual leap. Defendants have not advanced such a
proposition explicitly. But this is in fact an implicit premise of
their contention -- or a consequence of it, if one takes a43
hindsight view of having applied their proposed rule in
decisionmaking. In effect, their proposed rule would work this
way: Anything that is useful is a "useful article"; nothing about
a "useful article" is ever copyrightable; because 1-2-3 is useful,
and is an article, it is not copyrightable.
A more sensible interpretation of the statutory mandate
is that the mere fact that an intellectual work is useful or
functional -- be it a dictionary, directory, map, book of
meaningless code words, or computer program -- does not mean that
none of the elements of the work can be copyrightable. Also, the
statute does not bar copyrightability merely because the
originality of the expression becomes associated, in the
marketplace, with usefulness of the work to a degree and in
dimensions not previously achieved by other products on the market.
Brandir International. Inc. v. Cascade Pacific Lumber Co.. 834 F.2d
1142, 1147 (2d Cir. 1987) ("[A] copyrighted work . . . does not
lose its protected status merely because it subsequently is put to
functional use."); NEC Corp. v. Intel Corp.. 645 F. Supp. 590, 595
(N.D. Cal. 1986) ("function performed by defendant's microprograms
. . . does not affect their status as copyrightable subject
matter), vacated on grounds of judge's recusal, see 835 F.2d 1546
(9th Cir. 1988). To hold otherwise would be to deny copyright
protection to the most original and least obvious products of the
creative mind merely because the marketplace accepts them as
distinctively "functional." Such a rule would grant copyright
protection for only those products that fall far short of being the44
best available. Rather than promoting and encouraging both the
development and disclosure of the best, such a rule would offer
incentives to market only the second, or third, or tenth best, and
hold back the best for fear that it is too good for
copyrightability. Copyrightability is not a synonym for
Accordingly, I conclude that a court, in determining
whether a particular element is copyrightable, must not allow one
statutory mandate -- that functionality or usefulness is not itself
a basis for copyrightability -- to absorb and destroy another
statutory mandate -- that elements of expression are copyrightable.
Elements of expression, even if embodied in useful articles, are
copyrightable if capable of identification and recognition
independently of the functional ideas that make the article useful.
This mandate may be viewed as a corollary of the central
distinction of copyright law between idea and expression, which is
explored further immediately below.
B. The Idea-Expression Riddle: Four Additional Concepts
It is by now plain that an idea is not copyrightable and
an expression may be. It does not follow, though, that every
expression of an idea is copyrightable. To begin to get an
understanding of the legally significant contrasts among an idea,
non-copyrightable expressions of the idea, and a copyrightable
expression, we must take account of four more concepts
Earlier parts of this Opinion refer to two of these four-
- "originality" and "functionality." The expression of an idea45
is copyrightable only if it is original -- that is, if the
expression originated with the author. 17 U.S.C. 102(a); see Part
III(A)(2)(b), supra. Even then the expression of the idea is not
copyrightable if the expression does no more than embody elements
of the idea that are functional in the utilitarian sense. 17
U.S.C. 102(b); see Part IV(A) supra.
The third concept is "obviousness." When a particular
expression goes no farther than the obvious, it is inseparable from
the idea itself. Protecting an expression of this limited kind
would effectively amount to protection of the idea, a result
inconsistent with the plain meaning of the statute. E.H. Tate Co.
v. Jiffy Enterprises. Inc.. 16 F.R.D. 571, 573 (E.D. Pa. 1954)
(small sketch and accompanying instruction "Apply hook to wall" so
obvious that it is not entitled to copyright protection).
It is only a slight extension of the idea of
"obviousness" -- and one supported by precedent -- to reach the
fourth concept: "merger." If a particular expression is one of a
quite limited number of the possible ways of expressing an idea,
then, under this fourth concept, the expression is not
When the uncopyrightable subject matter is very
narrow, so that "the topic necessarily
requires," if not only one form of expression,
at best only a limited number, to permit
copyrighting would mean that a party or
parties, by copyrighting a mere handful of
forms, could exhaust all possibility of future
use of the substance. In such circumstances it
does not seem accurate to say that any
particular form of expression comes from the
subject matter. However, it is necessary to
say that the subject matter would be

appropriated by permitting the copyrighting of
its expression. We cannot recognize copyright
as a game of chess in which the public can be

Morrissey v. Proctor & Gamble Co.. 379 F.2d 675, 678-79 (lst Cir.
1967) (citations omitted). See also Concrete Machinery Co. v.
Classic Lawn Ornaments. Inc., 843 F.2d 600, 606 (lst Cir. 1988)
("When there is essentially only one way to express an idea, the
idea and its expression are inseparable and copyright is no bar to
copying that expression."); Herbert Rosenthal Jewelry Corp. v.
Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971) (idea of a jewel-
encrusted life-like bee pin inseparable from expression; thus
expression not copyrightable because "protecting the 'expression'
in such circumstances would confer a monopoly of the 'idea' upon
the copyright owner"). cf. Atari. Inc. v. North American Philips
Consumer Electronics Corp., 672 F.2d 607, 616 (7th Cir.), cert.
denied, 459 U.S. 880 (1982) (scnes faire of literary works --
"stock literary devices" such as "incidents, characters or settings
which are as a practical matter indispensable, or at least
standard, in the treatment of a given topic" "are not protectible
[sic] by copyright"); Landsberg v. Scrabble Crossword Game Players.
Inc.. 736 F.2d 485, 489 (9th Cir.) (scnes faire not
copyrightable because granting a copyright "would give the first
author a monopoly on the commonplace ideas behind the scenes a
faire"), cert. denied, 469 U.S. 1037 (1984).
If, however, the expression of an idea has elements that
go beyond all functional elements of the idea itself, and beyond
the obvious, and if there are numerous other ways of expressing the47
non-copyrightable idea, then those elements of expression, if
original and substantial, are copyrightable.
C. Elements of the Legal Test for Copyrightability
A "legal test," as I use the phrase here, is a statement
of the elements of fact, or law, or both fact and law, that must be
addressed by a decisionmaker to decide a question potentially
decisive of some claim or defense. "Copyrightability" of
nonliteral elements of Lotus 1-2-3 is essential to the claim of the
plaintiff in this case.
As already noted, the legal test for deciding
copyrightability, in a factual context such as is presented here,
has not been precisely defined either in the copyright statute or
in precedents interpreting and applying it. Nevertheless, the
statute and the precedents contain many mandates -- "markers" of
the borderline between copyrightability and non-copyrightability --
that narrow the scope of the questions remaining to be answered to
determine what test to apply.
Drawing into one statement the fundamental truths about
ideas and their expression that were sketched above, one may
accurately say that the issue of copyrightability of a "work" turns
not on whether the work expresses ideas but instead on whether, in
addition to expressing one or more ideas, in some material respect
it does more, and in an original way. One need not totally
disentangle the idea from its expression in order to conclude that
a particular aspect is expression. Indeed, to speak as if it were
ever possible completely to disentangle an idea from an expression48
of that idea is to speak abstract fiction rather than real-life
fact. Disentanglement, then, is not an "either-or," "0-1,"
"negative-positive," or "binary" matter. It is, instead, a matter
of degree.
Still, even if the "idea" cannot be completely
disentangled from its expression, to determine what is
copyrightable a decisionmaker must understand the meaning of "idea"
within the idea-expression distinction. To do so one must take
note also of another distinction -- one between generality and
specificity of conceptualizing the idea. Thus, a statement of the
most significant elements of the legal test for copyrightability,
consistent with precedents, begins:
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.

As Learned Hand recognized in a 1930 case concerning the
alleged infringement of the copyright of a play:
Upon any work, and especially upon a play, a
great number of patterns of increasing
generality will fit equally well, as more and
more of the incident is left out. The last may
perhaps be no more than the most general
statement of what the play is about, and at
times might consist only of its title; but
there is a point in this series of abstractions
where they are no longer protected, since
otherwise the playwright could prevent the use
of his "ideas," to which, apart from their
expression, his property is never extended.
Nobody has ever

been able to fix that boundary, and nobody ever

Nichols, 45 F.2d at 121 (citations omitted). See also Shipman v.
R.K.O. Radio Pictures. 100 F.2d 533, 538 (2d Cir. 1938) (L. Hand.,
J., concurring) ("Nichols . . . held that there is a point where
the similarities are so little concrete (and therefore so abstract)
that they become only 'theme', 'idea', or skeleton of the plot, and
that these are always in the public domain; no copyright can
protect them. The test is necessarily vague and nothing more
definite can be said about it.") Thirty more years of experience
in judging did not change Learned Hand's view: "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." Peter Pan Fabrics. Inc. v.
Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960) (L. Hand,
J.). In another context, Hand described such "ad hoc"
decisionmaking as "fiat." Sinram v. Pennsylvania Railroad Co., 61
F.2d 767, 771 (2d Cir. 1932) (L. Hand, J.). In whatever way this
kind of decisionmaking may be described, Hand offered us no formula
for distinguishing between idea and expression like that he devised
for the calculus of reasonable care in United States v. Carroll
Towing Co., 159 F.2d 169, 173 (L. Hand, J.) (articulating the "BPL"
formula), reh'g denied, 160 F.2d 482 (2d Cir. 1947). It seems the
better part of wisdom, if not valor, not to press the search for a
suitable bright-line test of copyrightability where Learned Hand,
even after decades of experience in judging, found none.
For all these reasons, as a practical necessity, whether50
explicitly or only implicitly, courts apply an abstractions
scale in determining copyrightability. In doing so they make
a decision involving choice and judgment of a type that human
minds make regularly in daily affairs, but computers of the
current state of the art cannot make. Still, though "judgment"
is required and the answer to be given is not precisely
"calculable," analogies to arithmetic calculations and to
"scales of justice" may aid the human mind in choosing and
"weighing" factors that properly go into the metaphoric
In summary, one among the principal elements to be
weighed in determining copyrightability when the idea-
expression distinction applies is to conceive and define the
idea in a way that places it somewhere along the scale of
abstraction (somewhere between the most abstract and the most
specific of all possible conceptions). Illustrations from the
evidence in this case will help to explain in a more concrete
way this element of the legal test for copyrightability. See
Part V(C), infra. Before turning to those illustrations,
however, I state in a similarly abstract way, to be explained
later by illustrations, two more elements that I conclude
a decisionmaker must consider to determine copyrightability of
a computer program like that at issue in this

2Despite Time Magazine's decision to honor "the computer" as
its 1982 "Man of the Year," and despite advances in the field of
artificial intelligence, I take it as a premise of decisionmaking
in this case that computers, for better or worse, do not yet have
the human feelings, strengths, and failings that lie beyond those
we describe as logical, or cognitive, or intellectual in the
broadest sense. 51
In addition to taking account of the distinction between
generality and specificity, to make use of Hand's abstraction scale
for applying the idea-expression distinction we need to identify
and distinguish between essential and nonessential details of
expressing the idea. Some, but of course not all, details, are so
essential that their omission would result in a failure to express
that idea, or in the expression of only a different and more
general idea. Accordingly, two more elements in the legal test for
copyrightability are:
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."

In addressing this third element of the test for
copyrightability, the decisionmaker is measuring "substantiality" .
not merely on a quantum scale but by a test that is qualitative as
well. SAS Institute, 605 F. Supp. at 829-30 ("the piracy of even a
quantitatively small fragment ('a rose by any other name would
smell as sweet') may be qualitatively substantial").
By its nature, a legal test that requires weighing of
factors or elements such as these is not a bright-line or an
either-or test. It requires of the decisionmaker, instead, an52
evaluative or "judgmental" weighing of all relevant characteristics
of the work in which a copyright is claimed, all relevant
characteristics of the allegedly infringing work, and all of the
relevant circumstances of their development and use. It requires,
also, not a step-by-step decisionmaking process, but a simultaneous
weighing of all the factors or elements that the legal test
identifies as relevant. I do not suggest that the three elements
identified here are an all-inclusive list. They do appear,
however, to be the principal factors relevant to decision of
copyrightability of a computer program such as Lotus 1-2-3.
If the decisionmaker, weighing the relevant factors,
determines that the legal test applying the idea-expression
distinction is satisfied, copyrightability is established. Issues
may remain, of course, as to whether a copyright was perfected and
whether the alleged infringing work, measured by the "substantial
similarity" test, did contain elements that infringed upon the
copyrightable elements of the copyrighted "work." Also, issues may
remain as to whether damages have been proved, or whether the
controversy over infringement is instead "'a trivial pother,' a
mere point of honor, of scarcely more than irritation, involving
no substantial interest," Fred Fisher. Inc. v. Dillingham. 298 F.
145, 152 (S.D.N.Y. 1924) (L. Hand, J.) (citations omitted), for
which only statutory damages should be awarded. 17 U.S.C. 504(c)
D. Incentives and the Role of Advocacy
The advocate of broad copyrightability who understands53
that the court will apply a legal test that focuses principally on
these three elements has an incentive to urge that the court
conceive the "idea" in a very generalized sense; then many
different expressions of the idea would be possible, and protection
might be claimed for the work. The advocate of freedom to copy --
and of narrow copyrightability -- has an incentive to urge that the
court conceive the "idea" in a very particularized sense; then only
one or a few expressions of an idea defined in such particularized
terms would be possible, and no copyright protection for those few
expressions would be available because the idea and expression
would merge completely, or nearly so. Such extreme positions would
fail to assist the court in determining, for purposes of the first
element, where properly to place the idea along the abstractions
There is risk for each advocate, however, in yielding too
readily to these respective incentives. The argument of an
advocate who presses too far in one or the other of these
directions of generality or specificity in defining the idea will
not only lose the argument advanced but also lose credibility for
later advancing a more sensible alternative that proposes a less
extreme but still favorable position along the scale. Upon
reflection, then, advocates on both sides will be -- or at least
should be -- encouraged to moderate their ultra-contentious and
extreme positions in favor of more supportable propositions that
will more sharply focus the issue for adjudication.54
There is an additional risk for the advocate of freedom
to copy who attempts to persuade the court that Hand's abstractions
scale, and the three-element test applying it, is irrelevant to
computer programs. That advocate will be tempted to define the
idea in the most generalized terms, hoping to persuade the court
that, because the abstractions scale does not apply, all of the
many different expressions of that idea are non-copyrightable and
everyone is free to copy.
In this case, defendants have in fact advanced such an
argument. Yielding only to the near-uniformity of precedent for
copyrightability of source code and object code, defendants have
argued that every other form of expression of the "spreadsheet
metaphor" is non-copyrightable. For reasons now to be explained,
neither this extreme contention nor any of the alternatives the
defendants have advanced for non-copyrightability can be sustained.
A. "Look and Feel"
In musical, dramatic, and motion picture works, and works
of literature, nonliteral elements that are copyrightable have
sometimes been described as the "total concept and feel" of a work,
Roth Greeting Cards. 429 F.2d at 1110; Krofft Television, 562 F.2d
at 1167, "the fundamental essence or structure" of a work, 3 M.
Nimmer & D. Nimmer, Nimmer on Copyright 13.03[A][l] (1989), or
"the 'pattern' of the work," Chaffee, Reflections on the Law of
Copyright: Part I, 45 Colum. L. Rev. 503, 513 (1945). In the55
context of computer programs, nonliteral elements have often been
referred to as the "look and feel" of a program, e.g.,
Telemarketing Resources, 12 U.S.P.Q.2d at 1993; Samuelson and
Glushko, Comparing the Views of Lawyers and User Interface
Designers on the Software Copyright "Look and Feel" Lawsuits, 30
Jurimetrics 121 (1989). Initially, plaintiff too referred to these
elements as "look and feel," Amended Complaint 13 (Docket No. 15),
though plaintiff -- in trial, at least -- has not rested its
contentions primarily on this terminology.
Despite its widespread use in public discourse on the
copyrightability of nonliteral elements of computer programs, I
have not found the "look and feel" concept, standing alone, to be
significantly helpful in distinguishing between nonliteral elements
of a computer program that are copyrightable and those that are
One may argue that the phrase "look and feel" is
analogous to the "total concept and feel" test developed in Roth
Greeting Cards, 429 F.2d at 1110, and used in Krofft Television.
562 F.2d at 1167. In these cases, however, the "total concept and
feel" test was not invoked -- at least, not explicitly -- as an aid
to the court in determining which nonliteral elements were
copyrightable and why. Rather, these courts used the concept, not
in determining copyrightability, but, apparently assuming
copyrightability, in applying the substantial similarity test to
determine whether forbidden copying had occurred. For example, in
Roth Greeting Cards. the court considered whether the "text,56
arrangement of text, art work, and association between art work and
text" of defendant's greeting cards were substantially similar to
(e.g., copied the "total concept and feel" of) those elements of
plaintiff's greeting cards. 429 F.2d at 1109. And in Krofft
Television. the inquiry focused on whether defendant McDonald's,
with its television commercials, copied the "total concept and
feel" of plaintiff's H.R. Pufnstuf children's television series by
copying its locale (both occurred in imaginary world with similar
trees, caves, a pond, a road and a castle), fictional characters
(both were inhabited by talking trees, mayors with
disproportionately large round heads and long wide mouths,
"Keystone cops" characters, crazy scientists, and a multi-armed
evil creature), costumes and sets (created for defendant by former
employees of plaintiff), voices (executed for defendant by same
voice expert who did the voices for plaintiff's television series),
and plot. 562 F.2d at 1161, 1167 n.9.
It may be true that the issues of copyrightability and
substantial similarity are so interrelated that these precedents
are relevant. The fact remains that they are not directly in point
for determining copyrightability in this case. Moreover, "look and
feel" is a conclusion, and the usefulness and applicability of a
precedent depends on the reasons the conclusion was reached in a
particular context, not on the conclusion itself. Thus, in trying
to understand the relevance of "concept and feel" precedents, we
need to look to details of those cases that appear to have been
relied upon in reaching the conclusion, rather than merely57
embracing the conclusion without regard for underlying reasons. As
we probe the circumstances of these precedents that closely, we are
likely to do something akin to applying the three-element test
described above.
B. The User Interface
Plaintiff in the present case, not now pressing any
argument that the phrase "look and feel" is a satisfactory
description of the copyrightable elements of Lotus 1-2-3, suggests
that the copyrightable nonliteral elements are more appropriately
described by the phrase "user interface." According to plaintiff,
the "user interface" of 1-2-3 includes such elements as "the menus
(and their structure and organization), the long prompts, the
screens on which they appear, the function key assignments, [and]

the macro commands and language," Plaintiff's Post-Trial Brief at
53 (Docket No. 319). I turn now to examining these elements more
Like manual spreadsheets, Baker, 101 U.S. at 100, the
electronic spreadsheet presents a blank form on which numerical,
statistical, financial or other data can be assimilated, organized,
manipulated and calculated. Galler Decl. 101-103; Lewis Affdvt.
92. In both Lotus 1-2-3 and VP-Planner, as in many other
electronic spreadsheet programs, a highlighted element of the basic
screen display resembles an "L" rotated ninety degrees clockwise
with letters across the top to designate columns, and numbers down
the left side to designated rows. See Appendices 1 (Visicalc), 2
(1-2-3), and 3 (VP-Planner). Cf. Multiplan, which also has a58
rotated "L" screen display, but which uses numbers for both columns
and rows (Tr. Ex. (Trial Exhibit) 132). The intersection of each
column and row is a "cell" in which a value (e.g., 31,963), formula
(e.g., one that adds a column of numbers), or label (e.g., "Cost of
Goods") may be entered.
Both programs utilize a "two-line moving-cursor menu,"
which presents the user with a list of command choices (e.g.,
"file", "copy", "quit") and a moving cursor to use in communicating
("entering") the choice. The menu is called up to the screen by
pressing the slash ("/") key, and is located either above the
rotated "L" (as in 1-2-3), see Appendix 2) or below the rotated "L"
(as in VP-Planner, see Appendix 3). Cf. Multiplan, which uses a
three-line moving cursor menu (Tr. Ex. 132); Excel, which has pull-
down bar menus (Tr. Ex. 79).
The top line of the two-line menu contains a series of
words, each of which represents a different command. For example,
the top line of the first, or main, menu in 1-2-3 reads: "Worksheet
Range Copy Move File Graph Data Quit". See Appendix 2; cf.
Appendix 3 (main menu in VP-Planner). The first word of the line
is highlighted to signify the command that will be chosen if the
"enter" key is pressed; the highlighting, or "cursor," moves to the
right or left if the right or left cursor key is pressed.
The second line of the menu displays a "long prompt,"
which contains further information about the highlighted command.
In some cases, the long prompt is a description of the highlighted
command (e.g. for command "Copy", the long prompt reads: "Copy a5959
cell or range of cells"); in other cases, the long prompt provides
a list of the menu command subchoices that will be available if the
highlighted command is chosen (e.g., for command "Worksheet", the
long prompt reads: "Global, Insert, Delete, Column-Width, Erase,
Titles, Window, Status"; see Appendix 2; cf. Appendix 3 (VP-
Planner)). In the latter case, if the highlighted command is
subsequently chosen, the words that appeared in the long prompt
will now appear as second-level menu command choices on the top
line of the menu, and a new long prompt will take its place on the
second line.
In addition to having the option of selecting a command
by moving the cursor to the command and pressing the "enter" key, a
user may instead press the key representing the first letter of the
command word (e.g., "C" for "Copy", "W" for "Worksheet"). For this
reason, each word representing each command on a given menu line
must start with a different letter. See Galler Affdvt. 105-117;
Lewis Decl. 96-97.
Function keys present an additional way for the user to
communicate with, and operate, the programmed computer. Each
program assigns certain frequently-used commands to the various
"function keys" (labelled "Fl", "F2", "F3", etc.) on the keyboard.
For example, in 1-2-3, "Fl" corresponds to the command "Help", and
"F2" to the command "Edit". Galler Decl. 125. VP-Planner, in
contrast, assigns the function keys to the commands on the top line
of the menu. Thus, for example, when VP-Planner is in its main
menu mode, "Fl" corresponds to the command "Help", "F2" to the60
command "Worksheet", "F3" to the command "Range", "F4" to the
command "Copy", and so on. See Appendix 3 (function key numbers
listed before command terms).
Typically, users adapt particular spreadsheets to their
specific needs. Suppose, for example, that in order to achieve a
desired result, a user must perform the same sequence of commands
repeatedly in order to cause the computer to execute the same
functions repeatedly calculating depreciation based on certain
financial data, or saving the spreadsheet and printing a copy of
it). Rather than going step-by-step through the same sequence of
commands each time there is a need to perform a particular
function, the user may store a sequence of command terms as a
"macroinstruction," commonly called a "macro," and then, with one
command stroke that invokes the macro, cause the programmed
computer to execute the entire sequence of commands.
In 1-2-3, the command terms within a macro may consist of
menu choices (e.g., "/C" to copy a cell or range of cells, or
"/PPRAl.F19(enter)AGQ" -- for the command sequence "Print, Printer,
Range, Cell Al to Cell F19, Align, Go, Quit" -- to print the
specified range of cells from the spreadsheet). Also a macro may
include keyboard commands (such as function keys, cursor keys, or
the "enter" key), and special macro commands invoked by the command
"/X" (e.g., "/XI" is a macro command that performs an "if-then"
logical function). Because macros may contain many menu choices,
the exact hierarchy -- or structure, sequence and organization -of
the menu system is a fundamental part of the functionality of61
the macros. Also, because macro commands are typically invoked by
entering the first letter of command choices (e.g., "/C" for
copying, "/PPRAl.F19(enter)AGQ" for printing the specified range of
cells), the first letter of each command choice on a particular
menu is a vital element of the functionality of macros. See Galler
Decl. 121-124; Lewis Affdvt. 109-115.
C. Elements of the User lnterface as Expression
Applying to 1-2-3 the legal test stated in Part IV(C),
supra. I consider first where along the scale of abstraction to
conceive the "idea" for the purpose of distinguishing between the
idea and its expression.
At the most general level of Hand's abstractions scale,
Nichols, 45 F.2d at 121 -- the computer programs at issue in this
case, and other computer programs that have been considered during
the course of trial, are expressions of the idea of a computer
program for an electronic spreadsheet. Defendants are quite
correct, then, in asserting that the idea of developing an
electronic spreadsheet is not copyrightable -- that the core idea
of such a spreadsheet is both functional and obvious, even to
computer users who claim no technical competence. Thus, even
though programs like VisiCalc, 1-2-3, Multiplan, SuperCalc4, and
Excel are very different in their structure, appearance, and method
of operation, each is, at the most basic level, just a different
way of expressing the same idea: the electronic spreadsheet. It
does not follow, however, that every possible method of designing a
metaphorical spreadsheet is obvious, or that no form of62
expressing the idea of the spreadsheet metaphor can possibly have
such originality in pressing beyond the obvious as is required for
copyrightability, or that no special form of metaphorical
spreadsheet can possibly be a distinctive expression of a
particular method of preparing financial information.
The idea for a two-line moving cursor menu is also
functional and obvious, and, indeed, is used in a wide variety of
computer programs including spreadsheet programs. Nevertheless, it
does not follow that every possible method of designing a menu
system that includes a two-line moving cursor is non-copyrightable.
Of course, if a particular expression of the idea of an
electronic spreadsheet communicates no details beyond those
essential to stating the idea itself, then that expression would
not be copyrightable. The issue here is whether Lotus 1-2-3 does
go beyond those details essential to any expression of the idea,
and includes substantial elements of expression, distinctive and
original, which are thus copyrightable.
The idea for an electronic spreadsheet was first rendered
into commercial practice by Daniel Bricklin. As a student at .
Harvard Business School in the late 1970's, Bricklin envisioned a
"magic blackboard" that would recalculate numbers automatically as
changes were made in other parts of the spreadsheet. Eventually,
aided by others, he transformed this idea into VisiCalc, the first
commercial electronic spreadsheet. See Bricklin Affdvt. 48-96
(Docket No. 217). Bricklin's idea for VisiCalc was a revolutionary
advance in the field of computer programming. Dauphinais Affdvt.63
98 (Docket No. 280).
Although VisiCalc was a commercial success,
implementational characteristics limited the scope and duration of
its marketability as a spreadsheet product. Most notably, VisiCalc
was originally programmed for use on the Apple II computer, which
had limited memory (32K of RAM), limited screen display
capabilities (only 40 characters per line), and limited keys
available on the keyboard (no function keys and no up and down
cursor keys). When VisiCalc was later rewritten for use on the IBM
PC (which was introduced in August 1981), it was transferred with
minimal changes and without taking advantage of many of the PC's
more extensive capabilities.
Mitchell Kapor and Jonathan Sachs, the original authors
of 1-2-3, exploited this opportunity. Building on Bricklin's
revolutionary idea for an electronic spreadsheet, Kapor and Sachs
expressed that idea in a different, more powerful way. 1-2-3 took
advantage of the IBM PC's more expansive memory and more versatile
screen display capabilities and keyboard. 1-2-3, like many
electronic spreadsheet programs since, could thus be thought of as
an evolutionary product that was built upon the shoulders of
Just as 1-2-3 expressed the idea of an electronic
spreadsheet differently from VisiCalc, so did Microsoft's Excel.
Originally written for the Apple Macintosh computer, it exploits
the enhanced graphics capabilities of the Macintosh, as well as the
mouse input device that is standard with the Macintosh. Excel has64
pull-down bar menus rather than a two-line moving-cursor menu, and
a very different menu-command hierarchy. Tr. Ex. 79.
As already noted, these three products -- VisiCalc,
1-2-3, and Excel -- share the general idea of an electronic
spreadsheet but have expressed the idea in substantially different
ways. These products also share some elements, however, at a
somewhat more detailed or specific point along the abstractions
scale. One element shared by these and many other programs is the
basic spreadsheet screen display that resembles a rotated "L." See
Appendices 1 (VisiCalc), 2 (1-2-3), and 3 (VP-Planner). Although
Excel uses a different basic spreadsheet screen display that more
closely resembles a paper spreadsheet, there is a rather low limit,
as a factual matter, on the number of ways of making a computer
screen resemble a spreadsheet. Accordingly, this aspect of
electronic spreadsheet computer programs, if not present in every
expression of such a program, is present in most expressions. Thus
the second element of the legal test weighs heavily against
treating the rotated "L" screen display as a copyrightable element
of a computer program. Morrissey, 379 F.2d at 678-79.
Another expressive element that merges with the idea of
an electronic spreadsheet -- that is, that is an essential detail
present in most if not all expressions of an electronic spreadsheet
is the designation of a particular key that, when pressed, will
invoke the menu command system. The number of keys available for
this designation is limited for two reasons. First, because most
of the keys on the keyboard relate either to values (e.g., the65
number keys and mathematical operation keys) or labels (e.g., the
letter keys), only a few keys are left that can be used, as a
practical matter, to invoke the menu command system. Without
something more, the programmed computer would interpret the
activation of one of these keys as an attempt by the user to enter
a value or label into a cell. Second, because users need to invoke
the command system frequently, the key designated for this purpose
must be easily accessible. For example, the user should not be
required to press two keys at the same time (such as "Shift,"
"Alt," or "Ctrl" along with another key).
As just noted, when all the letter, number, and
arithmetic keys are eliminated from consideration, the number of
keys remaining that could be used to invoke the menu command system
is quite limited. They include the slash key ("/") and the semi-
colon key (";"). The choice of the creators of VisiCalc to
designate the slash ("/") key to invoke the menu command system is
not surprising. It is one of very few practical options. Thus the
second element of the legal test weighs heavily against
copyrightability of this aspect of VisiCalc -- and of 1-2-3. This
expression merges with the idea of having a readily available
method of invoking the menu command system.
Other elements of expression a decisionmaker may regard
as either essential to every expression of an electronic
spreadsheet, or at least "obvious" if not essential, include the
use of the "+" key to indicate addition, the "-" key to indicate
subtraction, the "*" key to indicate multiplication, the "/" key66
within formulas to indicate division, and the "enter" key to place
keystroke entries into the cells. See Dauphinais Affidavit, 78.
Each of the elements just described is present in, if not
all, at least most expressions of an electronic spreadsheet
computer program. Other aspects of these programs, however, need
not be present in every expression of an electronic spreadsheet.
An example of distinctive details of expression is the precise
"structure, sequence, and organization," Whelan, 797 F.2d at 1248,
of the menu command system.
Consider first the menu command system of VisiCalc. The
main menu command line reads: "Command: BCDEFGIMPRSTVW-".
Appendix 1. Each of these letters (or, to use defendants' experts'
preferred terminology, "symbolic tokens") stands for a different
command -- in this case: Blank, Clear, Delete, Edit, Format,
Global, Insert, Move, Print, Replicate, Storage, Titles, Version
Number, Window, and "-" for "Label Repeating." Many of these
commands invoke submenus which also contain a series of letters,
each of which represents a submenu command choice. See VisiCalc
Command Structure Chart (Tr. Ex. 140, pp. 3-3 and 3-4).
This 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 idea of a menu structure -- including
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 screen67
(i.e., first letter only, abbreviations, full words, full words
with one or more letters capitalized or underlined), the type of
menu system used (i.e., one-, two-, or three-line moving-cursor
menus, pull-down menus, or command-driven interfaces), and the long
prompts -- could be expressed in a great many if not literally
unlimited number of ways.
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.
The statutory provisions regarding "compilation," 17 U.S.C. 101,
103, are not essential to this conclusion, but do reinforce it. A
different total structure may be developed even from individual
components that are quite similar and limited in number. To
determine copyrightability, a court need not -- and, indeed, should
not -- dissect every element of the allegedly protected work.
Rather, the court need only identify those elements that are
copyrightable, and then determine whether those elements,
considered as a whole, have been impermissibly copied. Atari Games
Corp. v. Oman. 888 F.2d 878, 882-83 (D.C. Cir. 1989) (rejecting
"component-by-component analysis," and ruling instead that focus
must ultimately be on "work as a whole").
It is plain that plaintiff did not impermissibly copy68
copyrighted elements of VisiCalc. Lotus 1-2-3 uses a very
different menu structure. In contrast with VisiCalc's one-line
main menu that reads "Command: BCDEFGIMPRSTVW-", the main menu of
Lotus 1-2-3, which uses a two-line moving-cursor menu system,
reads: "Worksheet Range Copy Move File Graph Data Quit". Appendix
2. Most of the submenus similarly present a list of up to about
ten full-word menu choices, presented in order of predicted
frequency of use rather than alphabetically. See Lotus 1-2-3
Command Tree Chart (Tr. Ex. 176, pp. 3-2 and 3-3). Other
spreadsheet programs have also expressed their command structures
in completely different ways. Cf. Multiplan (Tr. Ex. 132, p. 279-
374), Framework II (Tr. Ex. 131, pp. QR7-QR8), SuperCalc4 (Tr. Ex.
133, Quick Reference Card Number 1), Excel (Tr. Ex. 79, Reference
Guide, p. 90); Symphony (Tr. Ex. 130, Reference Manual, pp. 127-
190); MathPlan (Tr. Ex. 134, pp. 169-380); and PFS: Professional
Plan (Tr. Ex. 135).
I conclude that a menu command structure is capable of
being expressed in many if not an unlimited number of ways, and
that the command structure of 1-2-3 is an original and nonobvious
way of expressing a command structure. Emery Decl. 15.
Accordingly, the menu structure, taken as a whole -- including the
choice of command terms, the structure and order of those terms,
their presentation on the screen, and the long prompts -- is an
aspect of 1-2-3 that is not present in every expression of an
electronic spreadsheet. It meets the requirements of the second
element of the legal test for copyrightability.69
Finally, I consider the third element of the legal test -
- whether the structure, sequence, and organization of the menu
command system is a substantial part of the alleged copyrighted
work -- here Lotus 1-2-3. That the answer to this question is
"yes" is incontrovertible. The user interface of 1-2-3 is its most
unique element, and is the aspect that has made 1-2-3 so popular.
That defendants went to such trouble to copy that element is a
testament to its substantiality. Accordingly, evaluation of the
third element of the legal test weighs heavily in favor of Lotus.
Taking account of all three elements of the legal test, I
determine that copyrightability of the user interface of 1-2-3 is

As noted at the beginning of this Opinion, the parties'
stipulation regulating this first phase of trial reserved for a
later, jury phase, any issues of fact requiring jury determination
with respect to any alleged copying of Lotus 1-2-3. If in this
first phase the court had rejected Lotus' claim of copyrightability
of nonliteral elements of the user interface, a jury phase would
plainly have been required under that stipulation to determine
whether any copying of source code or object code had occurred.
Because, however, the court has decided instead that Lotus prevails
on this issue, the court must next consider whether any issue
remains that must be submitted to a jury before the court considers
whether defendants are liable for infringement of Lotus' copyright70
in 1-2-3.
For the reasons stated below, the answer to that inquiry
must be "no." Not only is the copying in this case so "overwhelming
and pervasive" as to preclude, as a matter of law, any assertion of
independent creation, see Midway Manufacturing Co. v. Bandai-
America. Inc.. 546 F. Supp. 125, 141 n.ll, 149 (D.N.J. 1982)
("overwhelming and pervasive" copying can preclude, as a
matter of law, finding of independent creation, and can support
grant of summary judgment for plaintiff, but such virtual identity
not shown in this case), but also, defendants in this case have
admitted that they copied these elements of protected expression.
Dr. James Stephenson, founder of defendant Stephenson
Software, is the original developer of the program that was
eventually released as VP-Planner. Like Kapor and Sacks,
Stephenson recognized that VisiCalc, although a "pioneering
spreadsheet approach," Stephenson Affdvt. 19 (Docket No. 287), was
not sufficient to meet the financial planning needs of some
companies and did not take advantage of technological advances in
computer hardware. Accordingly, in January 1982, Stephenson began
to develop his own electronic spreadsheet that he referred to as
FIPS ("Financial Information and Planning System"). See id. at
By January 1983, Stephenson had developed much of the
user interface for his spreadsheet program including the menu
command hierarchy. See Tr. Ex. 1014. By April 1983, Stephenson
installed at his client's business an operational version of his71
spreadsheet program, which had substantially the same menu
hierarchy as the January 1983 version. That hierarchy is
differently expressed from the hierarchy of both VisiCalc and
1-2-3. See Tr. Ex. 1019; Stephenson Affdvt. 56-60.
Stephenson first saw 1-2-3 in operation in February 1983,
after he had developed the menu hierarchy for FIPS. Throughout the
rest of that year, he continued to improve FIPS, changed its name
to VP-Planner, and began to consider marketing his program. By
December 1983, Stephenson entered into a letter of intent with Adam
Osborne regarding publication of VP-Planner. Osborne thereafter
organized defendant Paperback Software. Stephenson Affdvt. 66-
Throughout 1984, defendants continued to improve VP-
Planner. In the autumn, they recognized the success of 1-2-3 and
reached the conclusion that spawned this litigation: VP-Planner,
in order to be a commercial success, would have to be "compatible"
with 1-2-3. "The only way to accomplish this result," defendants
believed, "was to ensure that the arrangement and names of commands
and menus in VP-Planner conformed to that of Lotus 1-2-3." Id. at
117 (emphasis added). See generally id. at 99-130. Such
compatibility would allow users to transfer spreadsheets created in
1-2-3 to VP-Planner without loss of functionality for any macros in
the spreadsheet. Also, such compatibility would allow users to
switch from 1-2-3 to VP-Planner without requiring retraining in the
operation of VP-Planner.
To some degree at least, defendants' premises have proved72
incorrect in hindsight. That is, first, as Excel has proved, a
spreadsheet program did not have to be exactly compatible with 1-2-
3 in order to be a commercial success. Second, 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), and could have provided an on-line help function that
would show users the VP-Planner equivalent for 1-2-3 commands. See
Excel Reference Guide at 491, 425-26 (Tr. Ex. 79). See also Morgan
Decl. 3-7 (Docket No. 308) (Lotus itself created a "macro
conversion utility" to translate macros among different-language
editions of 1-2-3 (e.g., North American, international English,
French, German, Italian, Spanish, and Swedish)); Turner Decl. 10
(Docket No. 309). These points do not weigh significantly in the
present decision, however, because even if VP-Planner otherwise
would have been a commercial failure, and even if no other
technological ways of achieving macro and menu compatibility
existed, the desire to achieve "compatibility" or "standardization"
cannot override the rights of authors to a limited monopoly in the
expression embodied in their intellectual "work."
Defendants admit that, once these fateful decisions were
made by Stephenson and Osborne, defendants converted VP-Planner
into a program more like 1-2-3 -- indeed, a program that they have
publicly advertised as a "workalike for 1-2-3." VP Planner Manual
1.11 (1985) (Tr. Ex. 9). It is incontrovertible that, in the73
process, they copied the expressive elements of 1-2-3 that the
court has concluded are copyrightable:
[M]aking the changes required for macro
compatibility meant that we had to revise
existing elements of the [VP-Planner]
spreadsheet interface, including the
hierarchical menu structure; ensure that
keystroke sequences would bring about the same
operational result in both programs; add
certain functional elements found in Lotus
1-2-3 which VP-Planner did not yet support; and
discard certain features which, although
beneficial, were inconsistent with the macro
compatibility requirement. . . .

Several types of changes were required in
the VP-Planner program to achieve keystroke
macro compatibility. First, the menu structure
had to be altered so that all menu commands
would have the same first letter and be in the
same location in the menu hierarchy as in Lotus

Stephenson Affdvt. 144, 146. See generally id. at 142-157.
After these changes were made, the VP-Planner manual could
truthfully declare:
VP-Planner is designed to work like Lotus
1-2-3, keystroke for keystroke. . . . VP-
Planner's worksheet is a feature-for-feature
workalike for 1-2-3. It does macros. It has
the same command tree. It allows the same kind
of calculations, the same kind of numerical
information. Everything 1-2-3 does, VP-Planner

VP-Planner Manual at xi, 1.11.

The court's comparison of the 1-2-3 menu command
hierarchy and the VP-Planner menu hierarchy confirms that VPPlanner
"has the same command tree" as 1-2-3 -- that is, that defendants
copied the expression embodied in the 1-2-3 menu hierarchy. It is
true that there are some differences between74
1-2-3's menu structure and VP-Planner's menu structure. For
example, most VP-Planner menu lines begin with a help ("?")
command, and some additional commands are included at the end of
some menu lines (i.e., "DBase, Multidimensional" on the "/File
Erase" menu line; and "Page #, No Page #, Row/Col. #, Stop Row/Col.
#, Background" on the "/Print Printer Options Other" menu line).
Other differences between the two programs appear in the start-up
screens, the placement on the screen of the menu lines, the exact
wording of the long prompts, the organization of the help screens,
the increased width of the VP-Planner screen, and the ability of
VP-Planner to hide certain columns. See Stephenson Affdvt. 161-
176. The works are, nevertheless, substantially, indeed,
strikingly, similar. As Judge Learned Hand held in a copyright
case involving a pattern on a bolt of cloth that was used to make
dresses, infringement may be found despite some differences between
two works:
the ordinary observer, unless he set out to
detect the disparities, would be disposed to
overlook them, and regard their aesthetic
appeal as the same. That is enough; and
indeed, it is all that can be said, unless
protection against infringement is to be denied
because of variants irrelevant to the purpose
for which the design is intended.

Peter Pan Fabrics, 274 F.2d at 489, quoted in part with approval.
Concrete Machinery. 843 F.2d at 607. See also Atari v. Philips,
672 F.2d at 618 ("[A] laundry list of specific differences . . .
will not preclude a finding of infringement where the works are
substantially similar in other respects. . . . When analyzing two
works to determine whether they are substantially similar, courts75
should be careful not to lose sight of the forest for the trees.").
From the perspective of both an expert and an ordinary
viewer, the similarities overwhelm differences. Thus, as in Peter
Pan Fabrics. the two works at issue are substantially similar.
Indeed, by using the option in VP-Planner that allows a user to
move the menu from the bottom of the screen to the top of the
screen, a user could easily think 1-2-3 rather than VP-Planner was
the program in use. Certainly purchasers of a book designed to
teach users how to master 1-2-3, which is distributed with
demonstration copies of VP-Planner. would be likely to overlook the
disparities between 1-2-3 and VP-Planner. See L. Ingalsbe, Lotus
1-2-3 with Version 2.0 for the IBM PC (1987) (Tr. Ex. 215).
Moreover, even if some elements of VP-Planner were very
different, it would not give defendants a license to copy other
substantial elements of 1-2-3 verbatim. If one publishes a 1,000-
page book of which only a lO-page segment is an unauthorized
reproduction of copyrighted material, and if the lO-page segment is
a qualitatively substantial part of the copyrighted work, it is
not a defense to a claim of infringement that the book is 99%
different from the copyrighted material. Sheldon, 81 F.2d at 56
("no plagiarist can excuse the wrong by showing how much of his
work he did not pirate"); SAS Institute, 605 F. Supp. at 829-30.
Thus, defendants' proof that VP-Planner has many features that are
different from Lotus 1-2-3 is off point. The more relevant
question is: does it have significant features that are
substantially similar? I conclude, on the record before me, that
there is no genuine dispute of material fact on this question. The
answer to this question must be "yes."
Accordingly, I conclude that it is indisputable that
defendants have copied substantial copyrightable elements of
plaintiff's copyrighted work. I therefore conclude that, subject
to consideration of other contentions advanced by defendants,
liability has been established.
A. Policy Arguments and Limitations on the Role of Courts
Although Parts I through VI of this Opinion are
sufficient to demonstrate that defendants have impermissibly copied
copyrightable elements of expression embodied in 1-2-3, it may be
useful to pause, before reaching the merits of defendants'
proffered defenses to liability, to consider the proper use of
policy in determining statutory meaning.
As noted in Part III(A)(l), supra, the court is directed
to look to the "object and policy" of the law in determining the
manifested meaning of the law. Kelly. 479 U.S. at 43. The court
must, however, be careful that its weighing of the "object and
policy" implicit in the law does not override the mandates that are
either explicit in the statutory text or implicit in the provisions
of the whole law.
Defendants' arguments in this case have urged the court
to violate that limitation on the judicial use of policy
considerations. That is, in the name of the "object and policy"
of copyright law, defendants have argued: (1) that the idea-
expression distinction creates unnecessary and counter-productive
uncertainty that could be avoided by a bright-line test of
copyrightability; (2) that the policy of promoting creativity
favors extremely narrow copyright protection in computer programs
for anything beyond source code and object code; and (3) that the
policy of encouraging standardization mandates the conclusion that
a user interface is not copyrightable. Also, in advancing these
policy arguments, defendants have obscured the nature of important
issues in the case by strained analogies and word games.
Policy arguments advanced without focusing on whether they are
inconsistent with the mandates of legislation -- along with
strained analogies and word games -- are fundamentally flawed
because they do not take account of limitations on the role of
courts, to which counsel as well as courts are obliged to be
sensitive. Courts must enforce the mandates of legislation, and
even when answering questions of law not answered by those
mandates, must do so in a way that respects legislative policy
choices, whether explicit or implicit.
Each of defendants' policy arguments addressed below
suffers from this fatal flaw.
B. Strained Analogies and Word Games
The reasoning that lawyers propose in arguments and
judges use in deciding cases often builds on simile, metaphor and
allusion, All such reasoning is within the scope of what we call
analogy, in the broadest sense. When strictly logical deductions
from authoritative declarations of law -- in constitutions,
statutes, and precedents -- do not provide answers to questions of
law that must be decided in the case before the court, the court
turns to analogy. Cf. Kelly, 479 U.S. at 43 ("we must . . . look
to the provisions of the whole law"). Thus, similes, metaphors,
and other forms of allusion are appropriately a part of our efforts
to communicate ideas. They are not to be mistaken, however, for
logically compelled inferences from authoritative declarations.
They are aids to understanding the meaning, not yet authoritatively
determined, of the authoritative declarations as applied to
circumstances those declarations did not explicitly address.
Defendants strongly urged the court to accept an analogy
between a computer program and a "useful article." As explained in
Part IV(A) of this Opinion, that proposed analogy is deeply flawed
because of an unstated implicit premise that the fact that a
computer program is "useful" utterly precludes copyrightability of
any expressive elements in it. In the same breath, though,
defendants concede, that source code and object code are
copyrightable. This concession is itself a demonstration of the
vulnerability of the "useful article" argument. The concession
makes clear a flaw in the analogical argument for treating a
computer program that is "useful" as necessarily nothing more than
a "useful article." If no explanation is offered for the exception
other than precedent, the analogy itself is challenged by the
Thus, labeling a computer program as a "useful article"79
in relation to a claim for copyrightability of nonliteral elements
of the user interface, but not a "useful article" in relation to a
claim for copyrightability of source code and object code, is
engaging in a word game rather than focusing on the merits of the
copyrightability issue.
An even more striking word-game argument is defendants
contention that in copying the 1-2-3 user interface, they have only
copied a "language," and that languages are not copyrightable.
See, e.g., Deposition of Steven Cook at 153:23-154:10 (Docket No.
327); Kocher Affdvt. 13-18 (Docket No. 272); Defendants' Post
Trial Brief at 87-103 (Docket No. 325). Although defendants have
not explicitly stated all the essential steps of this argument, by
filling the gaps in trying to understand the argument, one may
infer the following elements and corollaries of the argument:
(1) Although expression is copyrightable, the language in
which the expression is written is not copyrightable. Thus, a book
written in English or French may be copyrightable, but the English
and French "languages" are not works in which copyright may
(2) Like books, computer programs, written in computer
programming "languages," may be copyrightable, but only the "sets
of statements or instructions," and not the "language" in which
they are written, are copyrightable.
(3) 1-2-3 has a macro capability or facility that allows
a user to "write" her or his own macros. When the user writes a
macro, he or she is actually writing a kind of computer "program."80
See 1-2-3 Release lA User's Manual at 117 (macro "facility gives
the 1-2-3 user a true programming capability") (Tr. Ex. 72); 1-2-3
Release 2.01 User's Manual at 3-10 ("1-2-3 includes a number of
macro commands that create a powerful programming language") (Tr.
Ex. 72B).
(5) The macro, or "program," that the user writes may be
copyrightable if original and nonobvious. The "language" in which
the macro is written is never copyrightable.
(6) Thus, when defendants copied the menu command
hierarchy from 1-2-3, they did not copy a copyrightable element
that embodied expression, but rather, copied only the "macro
facility language" of 1-2-3, a non-copyrightable element in the
public domain.
The vulnerable steps of this argument include, at a
(1) That "language" has a single, invariable meaning in
all discourse about "languages";
(2) That not only languages such as English and French
but all other languages as well -- including Esperanto, and Reiss'
coined words, 276 F. at 718, and Pascal -- are automatically
ineligible for copyright protection (as to vulnerability of this
step of the argument, defendants, though invited at trial to do so,
have cited no precedent that supports the contention that a
"language," even if original, is not copyrightable);
(3) That "language" and "sets of statements or
instructions" are opposites, and never the twain shall meet -- that81
is, anything that is a "set of statements or instructions" is not a
"programming language," and anything that is a "programming
language" is not "a set of instructions."
Just to state these implicit elements of defendants'
argument is sufficient to demonstrate that the argument depends on
arbitrary definitions of words, adopted for undisclosed reasons.
In human experience, words have variable meanings; dictionaries
seldom list a single definition for a word. An argument that
depends on the proponents' undisclosed definitions of words -- and
even different definitions as a word is used in different steps of
the argument -- becomes a word game that obscures the substantive
meaning of the argument and is an obstruction rather than an aid to
the court's use of the adversary process to inform and thus improve
Having explored the argument fully to try to understand
its true nature, I conclude that defendants' "language" argument
about the macro facility of Lotus 1-2-3, like defendants' "useful
article" argument examined in Part IV(a), infra is totally without
C. Policy Arguments for Bright-Line Rules
One of the themes in defendants' bundle of policy
arguments is a plea for bright-line certainty. Indeed, it is a
persistent theme throughout defendants' submissions: Software
developers would like to know what they may and what they must not
copy. The idea-expression distinction, defendants argue, fails to
achieve this policy goal; therefore, the court should adopt instead82
the bright-line literal-nonliteral distinction.
The yearning for certainty is not unique to this case or
to copyright law. But certainty has a price. It reflects a hope
that the court will apply hard-and-fast rules despite circumstances
that cry out for a judgmental standard of decisionmaking that takes
account of circumstances an impartial observer would think relevant
to a "just" disposition of the case -- which, after all, is one of
the declared objectives of the legal system. E.g. Fed. R. Civ. P.
1 ("just, speedy, and inexpensive determination of every action").
The more deeply one probes, whether as lawyer or judge,
or as an interested observer or critic of the legal system, the
clearer it becomes that in many circumstances hard-and-fast rules,
despite their initial attractiveness and false promise of
certainty, have consequences that offend one's sense of justice.
For example, hard-and-fast rules, because they allow for little or
no evaluation and discretion, sometimes fail to take account of the
competing values underlying the relevant law, and fail even to
attempt to find an accommodation that serves conflicting highvalue
interests as well as possible, and at the lowest possible
detriment to each. Professionals in law are forced by the nature
of their work to do more probing into the disadvantages of bright-
line rules than other observers generally are likely to do. For
this reason, professionals are less likely than other observers to
expect decisionmaking based on hard-and-fast rules that, in
hindsight, seems arbitrarily to disregard relevant circumstances
and to deserve the pejorative label "legalistic."83
In this case, defendants have nevertheless proposed a
bright-line rule that would extend copyright only to source code
and object code, and never to nonliteral elements of computer
programs. That proposal must be rejected. Not only is the
proposed distinction contrary to the statutory mandates discussed
throughout this Opinion, but also, it reflects the false hopes that
are endemic to trying to apply bright-line rules where judgmental,
evaluative standards are more appropriate. Nichols, 45 F.2d at
121; Peter Pan Fabrics, 274 F.2d at 489.
In any event, as noted in Part II, Congress could have
constitutionally drawn defendants' proposed bright-line providing
protection only to computer program code and not to nonliteral
elements of computer programs -- but Congress has not done so.
Without a congressional mandate, it would be an abuse of authority
for this court, in deciding this case, to use a bright-line test of
copyrightability that makes the literal-nonliteral distinction
decisive. Instead, the court must adjudicate within the area of
protection mandated by Congress.
D. Opinion Evidence and Premises of Legal Rulings
Defendants, though disavowing any intent to invite the
court to engage in lawmaking, have gone to extraordinary lengths in
this case to advance policy arguments that a court can
appropriately consider only if, in order to decide the case sub
judice, it must answer previously unanswered questions about the
meaning of relevant constitutional, statutory, and judicial sources
of authority. Whether such a determination of previously84
undetermined meaning of an authoritative declaration is described
as lawmaking, as I believe it to be, or instead in some other way
-- for example, as determining what "old statutes have since
become" in circumstances materially different from those existing
when the statute was enacted, R. Dworkin, Law's Empire, 248-50
(1986) -- is of less consequence than how a court goes about
deciding meaning for the case at hand. What "facts" or "evidence"
shall the court consider? Shall the court consider expert opinions
about what the circumstances were at the time the statute was
enacted, and how they differ now?
Defendants' submissions have failed to address directly
these basic questions about the appropriate role of courts.
Implicitly, however, they have asked the court to consider policy
arguments as freely as if the court were under no constraints in
this respect. Defendants, for example, offered the following
opinion testimony of a witness qualified as an expert in computer
software development:
If the law is interpreted to say that a
developer may not make a new program that can
use the data files and inputs accepted by
existing programs, then computer advancement as
we know it will be slowed. . . .

I believe that such a decision would throw
the entire software industry into confusion. .
. . [T]here would be a chilling effect on
development and advancement in many areas. . .

This case has implications about whether or not
new, improved programs can read and execute
data users created for themselves with an older
program. The quantity of data to be affected
by this decision is incomprehensively vast. It
is not a case about "cheap copies".

If aspects of screen displays that are
governed by functionality (such as a command
language like the 1-2-3 command structure) are
held to be within the scope of copyright
protection, then progress in application and
systems computer programs could be dramatically
slowed in the United States.

Bricklin Affdvt. 176-77, 179-80. See also Samuelson & Glushko,
Comparing the Views of Lawyers and User Interface Designers. 30
Jurimetrics at 137 (concluding on basis of survey that leading user
interface designers oppose strong copyright protection for elements
of a user interface because such protection would be harmful,
rather than helpful, to the industry).
By rulings during trial, the court received opinion
evidence of this kind into the "record" in the broadest sense, even
though excluding it from consideration in relation to any material
adjudicative fact that might be in dispute. Not surprisingly,
defendants, though explicitly invited to do so, were never able to
identify any "adjudicative fact" question, as that term is used in
Rule 201 of the Federal Rules of Evidence, to which opinion
evidence such as this would be relevant. The court nevertheless
received this evidence, over plaintiff's objection on the ground of
irrelevance, because courts are free to consider "evidence" of this
type when deciding "legislative" (or "premise") facts. That is,
courts may consider such evidence to resolve disputable assertions
of an evaluative nature (either about the past or about the future)
or assertions about historical facts, or predictions about future
consequences of adopting one or another rule of law, as premises
for deciding what legal ruling to make.86
201(a), Notes of Advisory Committee (explaining "legislative
facts"). See also In re Asbestos Litigation, 829 F.2d 1233, 124552
(3d Cir. 1987) (concurring opinion of Becker, J.), cert. denied,
485 U.S. 1029 (1988). This is not to say, however, that either the
trial court that allows the evidence to be received into the record
or an appellate court on review is limited by the rules of
admissibility and the standards of review that apply to disputed
issues of "adjudicative" fact. Chastleton Corp. v. Sinclair, 264
U.S. 543, 548 (1924) ("the Court may ascertain as it sees fit any
fact that is merely a ground for laying down a rule of law"). Cf.
Lockhart v. McCree, 476 U.S. 162, 168-69 n.3 (1986) ("We are far
from persuaded, however, that the 'clearly erroneous' standard of
Rule 52(a) applies to the kind of 'legislative' facts at issue
here."). See also Dunagin v. City of Oxford, Mississippi. 718 F.2d
738, 748 n.8 (5th Cir. 1983) (en banc) ("legislative" fact
discussion by Reavley, J.) ("If the legislative decision is not
binding at this stage, at least it carries great weight. Certainly
it cannot be thrust aside by two experts [who were called as
witnesses before the trial court] and a judicial trier of fact."),
cert. denied, 467 U.S. 1259 (1984).
The court having received defendants' proffered evidence
into the record for the limited purpose of considering its weight,
if any, as bearing on premises of any legal ruling the court might
find it necessary to make in deciding the case, plaintiff responded
with sharply contrasting opinions in its post-trial brief:
First, the tremendous growth and success of the
U.S. software industry is the direct

result of the creative and original efforts of
its software developers, laboring under the
protection of the copyright laws. Innovation
has been the key to market success. . . .

Second, to the extent that defendants
attempt to characterize this struggle as
pitting large heartless corporate giants
against lonely and defenseless developers
working out of their dens and basements, the
defendants do not understand what is at stake
here. If the elements of a computer program at
issue here were to lose their copyright
protection, the biggest losers of all would be
the small developers. The history of this
industry has been one of creative designers who
identify an unfilled need in the market and
then design and build a superior product to
fill that need. . . . [T]he developers' ability
to realize substantial rewards for their
creative efforts has depended entirely upon the
legal protection copyright has afforded their

If the defendants could rewrite the law,
however, those days would be over. The first
time a developer demonstrated an attractive new
product at Comdex or Softeach or some other
industry gathering, hundreds of programmers in
corporate research laboratories around the
world would set to work creating their own
versions of the program to compete with the
original. A major firm, with a staff of
talented programmers, could fairly promptly
create a clone of almost any new program and,
in so doing, rob the author of much of the
value of his creative efforts. The original
author might have a head start, but that would
provide little comfort once the major firms hit
the market with their "new" products. . . . If
copying were legal, the creators would lose
out. It is as simple as that.

It is no accident that the world's
strongest software industry is found in the
United States, rather than in some other
jurisdiction which provides weaker protection
for computer programs. The system is working,
and there is no reason to change it.

Plaintiff's Post-Trial Brief at 87-89; see also Tarter Decl. 7288
73 (Docket No. 289) ("[I]nterface design represents one of the most
crucial aspects of software design. In order to promote innovation
and the evaluation of better software products, it is important
that we protect the investment that the best developers make in
interface design."); Clapes, Software. Copyright. & Competition at
202-03 (arguing that the user interface, which is often the most
important feature of a computer program, requires strong copyright
protection to encourage further innovation and advancement).
The opinion testimony offered in this case failed
completely to focus on circumstances existing at any time Congress
acted to enact or amend any part of the copyright law. For this
reason, it has little, if any, value in illuminating issues of law
presented in this case. It is relevant, of course, that both the
text and history of the copyright law manifest a purpose of
encouraging innovation and of doing so through copyright
protection. At the time of congressional action, however -- even
as late as the 1976 Act and the 1980 amendments -- it was not
possible to know how the computer programming industry would change
over the ensuing years, and what exact scope of protection would
best advance the policy goals in newly developed and now
foreseeably developing circumstances. In light of that
uncertainty, shall the court consider expert opinions about what
the law ought to be today? What if those opinions appear to be
inconsistent with the accommodation, struck by the statute now in
effect, among competing and to some extent conflicting public
policy justifications for broader or narrower copyright protection?89
I conclude that a court would be going well beyond even
the precedents most receptive to consideration of legislative
history if it took into account expert opinions of persons
experienced in the field of computer software development that are
manifestly inconsistent with the accommodation that Congress struck
when it enacted the Copyright Act of 1976 and the most recent
amendments of the copyright law. In the 1976 Act, Congress
manifested an intention to encourage innovation in the computer
programming field, and to do so through copyright law that
explicitly gives substantial protection to innovative expression in
intellectual "works," including computer programs. Congress made
this decision despite expert testimony that extending copyright
protection to computer programs might have "disastrous consequences
. . . on standardization in electronic data processing," Copyright
Law Revision: Hearings on S. 597 Before the Subcommittee on
Patents, Trademarks, and Copyrights of the Senate Committee on the
Judiciary, 90th Congress, lst Session 589 (1967) (Testimony of
Professor Anthony Oettinger), despite academic criticism of the
decision to extend copyright protection to computer programs,
Breyer, Uneasy Case for Copyright, 84 Harv. L. Rev. at 340-351
(concluding that "[c]omputer programs should not receive copyright
protection at the present time"), and despite explicit proposals
that copyright protect only "the instructions themselves" while
leaving others free to otherwise "replicate [another's] program
exactly." Hearings on S. 597 at 571-73 (Statement of EDUCOM)
("Broad copyright protection for programs is90
unwise and improper . . . [H]ad programming been constantly carried
out under the threat of infringement actions charging plagiarism of
existing copyrighted programs, it is doubtful whether the growth of
programs and programming techniques of recent years would have been
possible."). The 1980 amendments, too, plainly went farther in
protecting the interests of the creators of an original software
product than defendants' experts now propose (and than some experts
at the time proposed, e.g., CONTU, Final Report at 56-76 (Hersey,
C., dissenting)), even though they did not go as far as proposed by
others to whose views Congress then had access.
When a court determines the meaning of the copyright
statute in a new context, different from what could have been known
to even the most prescient observer at the time Congress acted, the
court must respect the congressional mandate -- especially with
respect to congressional determinations of premise facts -- and is
constrained to search not for what the court might now
independently consider to be the best accommodation of competing
interests but instead to determine an accommodation in this new
context that is consistent with the accommodation that Congress
enacted for the context to which it spoke. To the extent that
expert opinions illumine the comparison between the context to
which Congress spoke (the circumstances of software development
then existing and predictable future circumstances) and the current
context (the changing circumstances of software development now
existing and now predictable for the future) the court may and
should take them into account. To the extent, however, that expert91
opinions propose solutions inconsistent with the congressional
accommodation, they must be disregarded.
On the basis of the complete record now before me, I
conclude that defendants' policy arguments in this case are
inconsistent with the accommodation struck by Congress in passing
the Copyright Act and its amendments. Moreover, defendants have
not demonstrated any significant changes in the premise facts upon
which Congress acted, and upon which CONTU rested its
recommendations. If anything, user interfaces have become more
expressive and more communicative since 1976 and 1980. I thus
conclude that I must disregard defendants' experts' predictions of
doom for the computer programming industry if copyright is extended
to the user interface and other nonliteral elements of computer
programs that embody expression, just as Congress disregarded
Professor Oettinger's gloomy prediction of "disastrous
consequences" and Commissioner Hersey's dissent. Rather, this
legal issue must be resolved in such a way as to extend copyright
protection, clearly and unequivocally, to those nonliteral elements
of computer programs that embody original expression.
E. Defendants' Policy Arguments Founded On the OTSOG Principle
One more of defendants' policy arguments deserves
attention. Despite statutory mandates supporting the conclusion
that elements of the user interface of 1-2-3 are copyrightable,
defendants argue that the need to achieve compatibility and
standardization compels rejection of that conclusion on policy
grounds. Copyrightability of a user interface, they argue, will92
frustrate the public interest in allowing programmers to achieve
innovation by "borrowing" and improving upon ideas of other
programmers, and will undermine attempts to achieve compatibility
and standardization among different programs. Especially in the
vital area of user interfaces, defendants contend, copyrightability
will have adverse consequences on encouraging innovation and on the
broader public welfare.
Defendants' general contention -- that "Progress of
Science and useful Arts" cannot occur unless authors and inventors
are privileged to build upon earlier progress and earlier
innovation -- has long been a virtually unchallenged premise in all
branches of the law of intellectual property. An early expression
of the point is Newton's declaration: "If I have seen further it
is by standing on ye sholders of Giants." Sir Isaac Newton, Letter
to Robert Hooke, February 5, 1675/1676, quoted in R. Merton, On the
Shoulders of Giants: A Shandean Postscript 31 (1965).3 This
principle, which Merton has referred to as "OTSOG" (based on the
modernized "on the shoulders of giants"), id. at 270, is also
firmly established in our case law:

3Newton's now-famous phrase -- "on ye sholders of Giants" --
may have been copied, at least in its "total concept and feel,"
from Bernard of Chartres who, according to Merton, authored the
OTSOG aphorism in the early twelfth century when he taught: "we are
like dwarfs standing [or sitting, for those dwarfs who prefer
safety to far-ranging vision] upon the shoulders of giants, and so
able to see more and see farther than the ancients." Merton, OTSOG
at 178-92. As Merton demonstrates, however, Bernard himself was
standing on the shoulders of Priscian, a sixth-century grammarian,
who wrote: "The younger [e.g., the more recent] the scholars, the
more sharp-sighted." Id. at 194-95 (brackets added by Merton). Of
course, Priscian's passage presents only the idea; it took Bernard
to express that idea in the metaphor of giants and dwarfs.

In truth, in literature, in science and in art,
there are, and can be, few, if any, things,
which in an abstract sense, are strictly new
and original throughout. Every book in
literature, science and art, borrows, and must
necessarily borrow, and use much which was well
known and used before.

Emerson v. Davies, 8 F. Cas. 615, 619 (C.C.D. Mass. 1845) (No.
4,436) (Story, J.). See also Ecclesiastes 1:9-10 ("[T]here is no
new thing under the sun. Men may say of something, 'Ah, this is
new!' -- but it existed long ago before our time."). Defendants,
however, attempt to squeeze something from the OTSOG cornerstone
that is not there.
Two possible applications of OTSOG in the field of
computer programming are relevant to this case. First, innovation
in computer programming is advanced as each programmer builds upon
the ideas of previous programmers. Second, some of the innovative
ideas may be expressed in a particular way that is so effective or
efficient that the expression becomes standardized throughout the
field even though the idea is capable of being expressed in other
ways -- that is, even though the particular expression is not an
essential detail to every expression of the idea. Although both
of these corollaries of OTSOG are important to the future of
computer programming, neither was embraced by Congress (as
explained below) in such a way as to override the public interest
in conferring upon an author a right to a limited monopoly in the
author's "work."
The metaphorical "shoulders of giants" on which
successors may legally stand are not as broad as defendants94
contend. The legally relevant shoulders of programming giants are
their ideas -- and do not extend to all of their expressions. The
encouragement of innovation requires no more. It is sufficient
that programmers are privileged to borrow and improve upon previous
ideas -- such as the ideas for an electronic spreadsheet and a two-
line moving cursor menu. Adequate room for innovation remains even
though successors are barred from copying earlier authors'
particular expressions such as the particular structure, sequence,
and organization of a menu command system. Pearl Systems. 8
U.S.P.Q.2d at 1525.
Of course, if a previous programmer's idea can be
expressed in only one or a limited number of ways -- such as the
rotated "L" screen display or the use of the slash key to invoke
the menu command system -- then the expression, too, may be copied.
Morrissey, 379 F.2d at 678-79. Where, in contrast, the idea is
capable of countless ways of being expressed, only inexpensive
cloning, and not innovation, would be advanced by allowing
programmers to copy the particular way the ideas have been
expressed by others.
The second corollary of the "OTSOG" principle relevant to
this case concerns standardization. Defendants have argued that
1-2-3, and specifically, 1-2-3's menu structure and macro command
facility, has set a de facto industry standard for all electronic
spreadsheets. Thus, defendants had no choice, they argue, but to
copy these expressive elements from 1-2-3. Had they not copied
these elements (including the macro facility), users, who had been95
trained in 1-2-3 and had written elaborate macros to run on 1-2-3
spreadsheets, would be unwilling to switch to VP-Planner. VP-
Planner would be a commercial failure. Neither the factual nor the
legal predicate of the argument is supportable.
First, defendants' argument ignores the commercial
success of Excel, an innovative spreadsheet program that is not
compatible with 1-2-3, either in its menu structure or in its macro
command facility. Also, defendants argument ignores the
alternatives to direct copying that were legally available to them.
As already explained, to the extent that VP-Planner was
concerned with compatibility for macros written originally for
1-2-3, VP-Planner could have provided for a translation device that
could read 1-2-3 macros and convert them, automatically, into
macros that could be run on VP-Planner. Microsoft Corporation
successfully included such a capability in Excel and Lotus itself
has written such a capability for translating macros among
different-language versions of 1-2-3. Defendants have not offered
persuasive evidence to show that they could not have done the same
with VP-Planner. That "[i]t would have been an extremely
complicated task" and would have cost defendants more to do so,
Dauphinais Affdvt. 163, is not a reason for denial of copyright
protection to 1-2-3. Copyright protection always has consequences
of this kind.
Moreover, to the extent that VP-Planner is an incremental
improvement upon 1-2-3 because of its multidimensional database
capabilities, defendants could have (1) sought a license to use96
1-2-3's menu structure and command facility; (2) offered to sell
their new expression of ideas to Lotus for inclusion in future
versions of 1-2-3; or (3) marketed VP-Planner as an "add-in" to
An "add-in" program is a program designed to be used in
conjunction with another program. For example, HAL is a program
that is used in conjunction with 1-2-3 -- a user must have both HAL
and 1-2-3 -- which allows a 1-2-3 user to enter commands in simple
sentences such as "copy column B to E" rather than by selecting
commands from the menus. Tr. Ex. 176. To encourage the creation
of add-in programs (which, in turn, make 1-2-3 a more attractive
program to potential customers), Lotus has published a product
called Lotus Developer Tools that helps developers write add-in
programs. Tr. Ex. 138. Thus, even if defendants found the first
two alternatives unattractive or unattainable (for example, because
of Lotus' nonconsent except on unfavorable terms, See Stewart, 110
S. Ct. at 1764 ("a copyright owner has the capacity arbitrarily to
refuse to license one who seeks to exploit the work")), they could
have marketed their multidimensional database capability as an
"add-in" for those users interested in that capability.
Transaction and marketing costs of the third option would tend to
screen out the new product unless its innovative features made it
very attractive to potential users, but this functional effect of
copyright law would be entirely consistent with the objects and
policies of that law as manifested in the copyright statute and
judicial precedents. By instead selling a stand-alone product that97
completely replaces 1-2-3, defendants have not merely sold and
profited from only their incremental additional expression.
Rather, they seek permission to profit also from copying Lotus'
protected expression.
Defendants' standardization argument is flawed for
another reason as well. As explained above, one object of
copyright law is to protect expression in order to encourage
innovation. It follows, then, that the more innovative the
expression of an idea is, the more important is copyright
protection for that expression. By arguing that 1-2-3 was so
innovative that it occupied the field and set a de facto industry
standard, and that, therefore, defendants were free to copy
plaintiff's expression, defendants have flipped copyright on its
head. Copyright protection would be perverse if it only protected
mundane increments while leaving unprotected as part of the public
domain those advancements that are more strikingly innovative.
Finally, the entire argument about standardization may be
questioned on a more fundamental ground. Defendants have cited no
statutory provision or precedent that has ever declared that
standardization, when not achieved de jure, is necessarily in the
public's best interest. The court is aware of no such precedent or
legislative mandate. A moment's reflection is enough to disclose
that the public interest in extensive standardization is a sharply
debatable issue. See, e.g., Tarter Decl. 34-45; cf. the QWERTY
typewriter keyboard (discussed in Farrell, Standardization and
Intellectual Property. 30 Jurimetrics 35, 36-98
38 (1989)). Decisive against defendants' contention, in any event,
is that the particular way they propose that the court resolve this
dispute would reduce copyright protection far below the mandate of
the copyright act.

A. Lack of Subject Matter Jurisdiction
Section 411 of Title 17 provides that an infringement
action may not be brought unless the author has applied for
registration of the copyright. If the application is denied, the
infringement action may not be brought unless the author serves a
copy of the complaint on the Register of Copyrights. "Copyright
registration under 411(a) is a [jurisdictional] condition
precedent to filing an infringement action." Quincy Cablesystems.
Inc. v. Sully's Bar. Inc., 650 F. Supp. 838, 850 (D. Mass. 1986).
Defendants argue that plaintiff's allegations of
copyright infringement in 1-2-3's user interface are, in reality,
allegations of copyright infringement in 1-2-3's "screen displays."
Defendants further argue that plaintiff's registration certificate
for 1-2-3 covers only the literal code of 1-2-3, that plaintiff has
failed to register the "screen displays" of 1-2-3 as separate
audiovisual works, and that this court consequently lacks
jurisdiction over allegations of infringement of the "screen
displays" of 1-2-3.
This contention borders on the frivolous. First, I
emphatically reject defendants' premise, based on yet another word99
game, that equates the user interface of 1-2-3 with 1-2-3's "screen
displays." In ruling that defendants have infringed plaintiff's
copyright, I have not ruled that defendants are liable because they
copied the "screen displays" of 1-2-3. Rather, I have concluded
that defendants copied protected nonliteral elements of expression
in the user interface and the underlying computer program.
Second, I conclude that, in any event, plaintiff's
registration certificates are sufficient to extend to the "screen
displays" of 1-2-3.
By focusing only on "screen displays," defendants have
failed to take due notice of the statutory language as it bears on
whether copyrightable elements of computer programs include the
"user interface" and other nonliteral aspects.
Depending on the sense in which the phrase "screen
display" is used, it may be quite correct to say that copyright
protection of a computer program does not
extend to screen displays generated by the
program. . . . This distinction results from
the fact that the same screen can be created by
a variety of separate and independent computer
programs. It is somewhat illogical to conclude
that a screen can be a "copy" of many different

Softklone, 659 F. Supp. at 455-56.
It is not, though, the screen display itself, in this
narrow sense, that is a copyrightable "computer program" -- that
is, "a set of statements or instructions . . . to bring about a
certain result," 17 U.S.C. 101. The screen display, understood in
this narrow sense, is useless for this purpose unless it is
integrated with other parts of the computer program so as to become100
indirectly part of the means by which the user communicates
instructions through the total program to bring about the desired
result. Thus, the copyrightable element is not, strictly speaking,
the screen display, narrowly understood, but the literal and
nonliteral elements of not only the display but also the
distinctive way of creating it. Indeed, the Softklone court
recognized this point:
Therefore, it is this court's opinion that a
computer program's copyright protection does
not extend to the program's screen displays,
and that copying of a program's screen
displays, without evidence of copying of the
program's source code, object code, sequence.
organization, or structure, does not state a
claim of infringement.

659 F. Supp at 456 (emphasis added).
Accordingly, just as using different dialogue does not
sanitize from claims of infringement a play that copies the plot
and characters from some other copyrighted work with resulting
substantial similarity, the fact that the screen display could
easily be created in many other ways -- either to perform the same
or to perform very different functions -- does not sanitize it from
claims of copyright infringement. The critical question, instead,
is whether copyright protection is available against creating and
using such a screen display -- including the manifestation of
structure, sequence, and organization in that display -- as a part
of the "set of statements or instructions" in a program that is
designed "to be used directly or indirectly in a computer in order
to bring about a certain result."
In any event, it is appropriate to consider "screen101
displays" in a broader sense that also includes the structure,
sequence, and organization of the underlying program as manifested
in the menus presented on the screen displays. I conclude that
plaintiff's certificates of copyright registration in the "entire
work" of 1-2-3 are sufficient to extend copyright protection to the
"screen displays," in this broader sense, of Lotus 1-2-3. See TX
1-233-501 (Tr. Ex. 1, covering "entire work" of "1-2-3"), TX 1-233-
502 (Tr. Ex. 2, covering "entire work" of "1-2-3 Release lA"), and
TX 1-694-602 (Tr. Ex. 3, covering "computer program text" of "1-2-3
Release 2").
The Copyright Office registers different works in
different ways. One registration form may be used for nondramatic
literary works (Form TX), different forms are required for
audiovisual works (Forms PA and VA), and a different form for sound
recordings (Form SR). Compendium of Copyright Office Practices
604 (1984) (hereinafter "Compendium II"). See also 37 C.F.R.
202.3(b)(1) (1989). As Congress recognized, however, the seven
distinct categories of copyrightable works that are listed as
examples in section 102(a) are not mutually exclusive:
The items are . . . overlapping in the sense
that a work falling within one class may
encompass works coming within some or all of
the other categories.

House Report at 53, reprinted at 5666. Thus, in registering a work
that defies easy categorization, an author is directed to use the
application form "in the class most appropriate to the type of
authorship that predominates in the work being registered."
Compendium II 604 (emphasis added); 37 C.F.R. 202.3(b)(2). See102
also Compendium II at 708 ("The appropriate application form is
generally determined by the nature of the authorship in which
copyright is claimed."); 37 C.F.R. 202.3(b)(2).
Most computer programs, like 1-2-3, are registered on
Form TX as nondramatic literary works. See Compendium II at
702.01 ("computer programs" should be registered as "nondramatic
literary works" on Form TX). Some computer programmers, however --
notably authors of video games -- have instead registered for
copyright the screen displays created by the program. Stern
Electronics. 669 F.2d at 855 (plaintiff "eschewed registration of
its program as a literary work and chose instead to register the
sights and sounds of [the video game] as an audiovisual work"); M.
Kramer Manufacturing Co. v. Andrews, 738 F.2d 421, 442 (4th Cir.
1986) ("a copyright in the audiovisual display, which display is
created by a computer program, protects not only the audiovisual
from copying, but also the underlying computer program to the
extent the program embodies the game's expression"). See also,
Atari Games v. Oman, 888 F.2d at 882 ("Video games, case law
confirms, rank as 'audiovisual works' that may qualify for
copyright protection."); Midway Manufacturing Co. v. Arctic
International, Inc., 704 F.2d 1009, 1012 (7th Cir.) (same), cert.
denied. 464 U.S. 823 (1983). This form of registration is
particularly appropriate where the chief function, and the bulk of
creative expression, of a particular computer program is the
creation of a series of pictorial images on the computer screen as
with video games. 103
Other authors of computer programs have applied for dual
registrations for computer programs -- one "literary" registration
to cover the code, and a separate "audiovisual" registration to
cover the screen displays. See Softklone, 659 F. Supp. at 455-56.
This practice has since been rejected by the Copyright Office as
duplicative. See Library of Congress, Copyright Office,
Registration of Computer Screen Displays. Docket No. 87-4, 53 Fed.
Reg. 21,817 (1988) ("all copyrightable expression owned by the same
claimant and embodied in a computer program, including computer
screen displays, is considered a single work and should by
registered on a single application form"); Copyright Office,
"Computer Programs and Related Screen Displays" (Tr. Ex. 1179)
(single registration required for computer programs and their
screen displays, including video game computer programs);
Compendium II at 607 (single registration covers single unitary
work); id. at 609 (copyright owner may "make only one basic
registration per work"); 37 C.F.R. 202.3(b)(6) (1989) (same);
Manufacturers Technologies. 706 F. Supp. at 993; Broderbund, 648
F. Supp. at 1133.
In any event, when Lotus attempted to register separately
the screen displays of 1-2-3 as an audiovisual work, the Copyright
Office denied the registration. In a letter to plaintiff,
Copyright Examiner Julia Huff explained:
textual screen displays embodied within the
computer program that generates them are
covered by the registration for the program,
without either the need or justification for
separate registration for the displays.
Because the displays are considered to be an

integral part of the program, the authorship in
the displays appears to be the same as that
contained in the program.

Letter of Jan. 20, 1987, from Huff to plaintiff (Tr. Ex. 1092).
Accordingly, I conclude that Lotus has properly
registered 1-2-3 for copyright protection, and that this court does
have subject matter jurisdiction over all aspects of this
infringement suit.
B. Laches and Equitable Estoppel
Next, defendants argue that plaintiff is barred from any
relief under the equitable doctrines of laches and equitable
Defendants have the burden of proving laches. Costello
v. United States. 365 U.S. 265, 282 (1961). Thus, to prevail on
this affirmative defense, defendants must prove by a preponderance
of the evidence (1) that plaintiff inexcusably and unreasonably
delayed in bringing this action; and (2) that the delay has
prejudiced defendants. Gardner v. Panama R. Co., 342 U.S. 29, 31
(1951); Puerto Rican-American Insurance Co. v. Benjamin Shipping
Co., 829 F.2d 281, 283 (lst Cir. 1987). Defendants have failed to
sustain either part of that burden.
According to defendants, beginning as early as April 30,
1985, "the trade press trumpeted Paperback's soon-to-be-released
spreadsheet product [VP-Planner], making no secret that it would
look and work like Lotus 1-2-3." Defendants' Post-Trial Brief at
120. VP-Planner was eventually released on October 30, 1985, but,
defendants' charge, Lotus waited until January 12, 1987, 438 days105
later, to bring suit.
Even if Lotus did wait fourteen-and-a-half months after
learning of VP-Planner's release before commencing this litigation,
I find that this delay was neither unreasonable nor inexcusable.
Defendants cite Worcester Brewing Corp. v. Rueter & Co., 157 F.
217, 219 (lst Cir. 1907), for the proposition that a fifteen-month
delay barred plaintiff's trademark infringement damage claim. That
case, though, involved a relatively simple claim that defendant
infringed plaintiff's trademark "Sterling Ale." Here, as evidenced
by the court's lengthy Opinion, plaintiff's claim of copyright
infringement in nonliteral elements of the user interface of 1-2-3
was a far more complicated claim, and one that required much more
time to evaluate and prepare.
In circumstances such as these, a delay of fourteen-and--
a-half months is not only reasonable, but, in fact, is likely to
serve both party and public interests in appropriate use of public
and private resources for resolution of disputes. As plaintiff
aptly asserts: "Prudent business judgment, Rule 11 and basic common
sense required Lotus first to ascertain that the threat to its
intellectual property interest was serious and that its legal
position was sound before filing suit." Plaintiff's Post-Trial
Brief at 83. See Manzi Decl. 8-11 (Docket No. 293); Roulo v.
Russ Berrie & Co., Inc., 886 F.2d 931, 942 (7th Cir. 1989) (twenty-
one-month delay in filing infringement suit reasonable where "delay
in filing was due to [plaintiff's] inquiry into the facts to
determine the merit of her claim against [defendant]"), cert.106
denied. 110 S. Ct. 1124 (1990).
Defendants nevertheless argue that, during the fourteen-
and-a-half-month delay, plaintiff at least had a duty to notify
defendants that plaintiff considered VP-Planner objectionable and
that plaintiff intended to claim proprietary rights in 1-2-3's user
interface. Not only did plaintiff fail to so notify defendants,

defendants assert, but, in fact, plaintiff affirmatively led
defendants to infer that VP-Planner was not objectionable.
Accordingly, defendants contend, plaintiff is estopped from
recovering against defendant. Defendants' Post-Trial Brief at 131
n.66 (citing Precious Metals Associates. Inc. v.Commodity Futures
Trading Commission. 620 F.2d 900, 908 (lst Cir., 1980) ("'A person
is estopped from denying the consequences of his conduct where the
conduct has been such as to induce another to change his position
in good faith or such that a would rely upon the
representations made.") (in turn quoting Bergeron v. Mansour, 152
F.2d 27, 30 (lst Cir. 1945))).
In support of this contention, defendants cite a form
letter that plaintiff's Supervisor of the Information Center sent
to Paperback in January 1986 inquiring as to whether Lotus could
use its copy of VP-Planner at any location at plaintiff's business.
Tr. Ex. 201. Defendants argue that this letter "suggested that
Lotus treated VP-Planner as it treated any other non-objectionable
software product." Defendants' Post-Trial Brief at 131.
First, defendants have failed to offer any evidence that
they did, in fact, draw that inference. Indeed, Steven Cook,107
Paperback's former president, testified that the form letter was
simply returned to plaintiff with the appropriate box checked, and
that Paperback did not even retain a copy of the letter. Cook
Affdvt. 24 (Docket No. 299). Second, the court is unable to
fathom how any reasonable person could draw that inference from
Lotus' form letter. In any event, defendants have cited no
authority to support the proposition that Lotus' letter, and Lotus'
failure to notify defendants of its internal investigation into
possible legal action during the fourteen-and-a-half month hiatus,
constitute the kind of actions that support laches or equitable
Another reason that defendants have failed to sustain
a laches defense is that they have failed to demonstrate any
At the core of defendants' asserted prejudice is the
following contention advanced by Paperback's former president:
If Lotus had sued Paperback within three or
four months after the release of VP-Planner,
then Paperback would not have continued to
market, sell, or develop VP-Planner in its
Lotus-compatible form, whether or not the
litigation had any merit.

Cook Affdvt. 33.
In light of defendants' belief that their spreadsheet
product, to be successful, had to be compatible with 1-2-3, and
defendants' strident insistence that 1-2-3's user interface is not
copyrightable, this contention is simply not credible. In
hindsight, perhaps, the expense of this lawsuit looms immense, but
the court does not credit the testimony that the mere threat of a108
lawsuit, especially one that defendants assert they deemed
frivolous, would have caused defendants' to retreat from marketing
a 1-2-3 "workalike" spreadsheet program. I find that defendants
have not shown that they were prejudiced by any delay.
Accordingly, I find that defendants have failed to
sustain either element of a laches defense, or an equitable
estoppel defense.

Although ruling on most evidentiary objections during the
trial, the court reserved ruling on some Rule 402 objections until
after the court had an opportunity to consider the relevance of
certain evidence in the context of the entire case. Most notable
is evidence proffered by defendants with respect to Visicalc, which
plaintiff asserted was irrelevant to any issues raised by this
Although I agree that the "VisiCalc story," in the
decisionmaking process reflected in this Opinion, has turned out
to be not relevant to any of the equitable defenses, and not
relevant to defendants' contention that Lotus itself copied aspects
of VisiCalc with 1-2-3, I conclude that the "VisiCalc story" is
relevant for background purposes. See Granite Music Corp. v.
United Artists Corp., 532 F.2d 718, 720-21 (9th Cir. 1976)
(admitting evidence of similar musical phrases appearing in works
that predate both plaintiff's and defendant's song proper to show,
for background purposes, that certain elements were of such109
ordinary and common occurrence that the probability of independent
coincidental production was great). Also, I conclude that this
evidence may appropriately be considered for the purpose of
deciding premise facts upon which the conclusions of law with
respect to copyrightability rest. See generally Part VII(D),
With respect to all other reserved evidentiary rulings,
the court concludes that they are moot in view of the findings and
rulings stated in this Opinion. Moreover, even if the court were
to rule explicitly that all of the evidence was admissible, I find
as factfinder that none of this evidence alone, nor all of it taken
together, would change any of the findings and conclusions
contained in this Opinion. That is, even when taken into account,
this evidence has so little probative weight that it does not
change any finding. Nevertheless, any party wishing an explicit
ruling on any reserved evidentiary objection may so move on or
before July 19, 1990, identifying specifically each objection on
which a more explicit ruling is requested with references, if
available, to specific pages in the transcript of the first phase
of this trial.
For the reasons explained in this Opinion and on the
findings and conclusions stated, it is hereby ordered:
(1) Liability for infringement by defendants' is
(2) Any party wishing an explicit ruling on any reserved110
evidentiary objection may so move on or before July 19, 1990,
identifying specifically each objection on which a more explicit
ruling is requested with references, if available, to specific
pages in the transcript of the first phase of this trial.
(3) A conference with respect to further proceedings
will be held as specified in the Joint Procedural Order of this
/s/ Robert E. Keeton
United States District Judge

Appendix 1
VisiCalc Screen, Main Menu
Tr. Ex. 1047, Tab A1

[Photograph of VisiCalc Main Menu Screen]

Appendix 2
1-2-3 Screen, Main Menu, Worksheet highlighted
Tr. Ex. 1047, Tab A2

[Photograph of 1-2-3 Main Menu Screen]

VP-Planner Screen, Main Menu, Worksheet highlighted
Tr. Ex. 1047, Tab A4

[Photograph of VP-Planner Main Menu Screen]

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