USCA1 Opinion

April 19, 1995

United States Court of Appeals
United States Court of Appeals
For the First Circuit
For the First Circuit
____________________
No. 93-2214
LOTUS DEVELOPMENT CORPORATION,
Plaintiff, Appellee,
v.
BORLAND INTERNATIONAL, INC.,
Defendant, Appellant.
____________________

ERRATA SHEET
ERRATA SHEET
The opinion of this

court issued on March

9, 1995, is amended

follows:
On page 38,
562.

line 16:

But see Campbell v.

________ ________

1174 (1994)."

Change "See id. at 562."

________
Acuff-Rose Music, Inc.,
______________________

to "See id.
_______
114 S. Ct.

11

United States Court of Appeals

United States Court of Appeals
For the First Circuit
For the First Circuit
____________________

No. 93-2214

LOTUS DEVELOPMENT CORPORATION,

Plaintiff, Appellee,

v.

BORLAND INTERNATIONAL, INC.,

Defendant, Appellant.

____________________

APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MASSACHUSETTS

[Hon. Robert E. Keeton, U.S. District Judge]

___________________

____________________

Before

Torruella, Chief Judge,

___________
Boudin and Stahl, Circuit Judges.
______________

____________________

Gary L. Reback,
________________

with whom

Peter N. Detkin, Michael Barcl

_________________ ______________

Isabella E. Fu, Wilson Sonsini Goodrich & Rosati,

_______________ _________________________________

Peter E. Gelha
______________

Katherine L. Parks, and Donnelly Conroy & Gelhaar, were on brief

___________________
__________________________
appellant.
Matthew P. Poppel, et. al, were
_________________

on brief for Computer Scientis

amicus curiae.
Dennis S. Karjala and Peter S. Menell on brief, amici curiae.
_________________
_______________

Jeffrey C. Cannon and Baker Keaton Seibel & Cannon were on br

__________________
_____________________________
for Computer Software Industry Association, amicus curiae.
Laureen E. McGurk, David A. Rabin,
__________________ ______________
Manning & Martin were on
_________________
Users

Group,

Danbury

Group, Napa Valley PC

brief for Chicago

Area Computer

Kentucky-Indiana Personal

Bryan G. Harrison and Mor

__________________
___

Computer Society, Dia

Society,

IBM

Computer Users Group, Long

AB Users

Island PC Us

Users Group, Pacific Northwest PC

Palmetto Personal Computer

Club, Philadelphia Area

Gro

Users Gro

Computer Socie

Inc., Phoenix

IBM PC Users Group,

Pinellas IBM PC Users

Group, Q

Cities Computer Society, Quattro Pro Users Group, Sacramento

Group, San Francisco
Twin Cities

PC

PC Users

Users Group,

Group, Santa Barbara

and

Warner Robbins

PC Us

PC Users
Personal

Gro

Compu

Association, amici curiae.

Diane Marie O'Malley
_____________________

and Hanson Bridgett Marcus Vlahos & R

____________________________________

were on brief for Software Entrepreneurs' Forum, amicus curiae.

Peter M.C. Choy
_________________

was

on

brief

for

American

Committee

Interoperable Systems, amicus curiae.

Howard B. Abrams, Howard C. Anawalt,
________________ _________________

Stephen R. Barnett, Ralph

__________________ _____

Brown, Stephen L. Carter, Amy B. Cohen, Paul J. Heald, Peter A. Jas

_____ _________________ ____________ _____________ ____________

John A. Kidwell, Edmund W. Kitch, Roberta R. Kwall, David L. Lan

________________ ________________ _________________ ____________
Marshall Leaffer,
_________________

Jessica D. Litman,
__________________

Charles R. McManis,
____________________

L.
___

Patterson, Jerome H. Reichman, David A. Rice, Pamela Samuelson, Da

_________ __________________ ______________ ________________ __
J. Seipp,

David E. Shipley, Lionel S. Sobel, Alfred C. Yen, and Di

________

________________

L. Zimmerman
_____________

were on

_______________

brief

for

_____________

Copyright Law

__

Professors,

ami

curiae.
Henry B. Gutman, with
________________

whom Kerry L. Konrad,

________________

Joshua H. Epste
_______________

Kimberly A. Caldwell, O'Sullivan Graev & Karabell, Thomas M. Lembe

____________________ ___________________________ ________________
James C. Burling, and Hale and Dorr, were on brief for appellee.
________________
_____________
Morton David Goldberg, June M. Besek,
______________________ _____________
Feder,
_____
brief

David O. Carson, Jesse

________________ _____

Schwab Goldberg Price & Dannay, and Arthur R. Miller were

_______________________________
_________________
for

Apple

International

Computer,

Inc.,

Business Machines

Digital

Equipment

Corporation, and

Corporati

Xerox Corporati

amici curiae.

Jon A. Baumgarten, Proskauer Rose Goetz & Mendelsohn, and Rob

_________________ ___________________________________
___

A. Gorman were on brief for Adobe Systems, Inc., Apple Computer, In

_________
Computer

Associates

Corporation,
curiae.

International,

and International

Inc.,

Business Machines

Digital

Equipm

Corporation, am

Herbert F. Schwartz, Vincent N. Palladino, Susan Progoff, Fis

____________________ _____________________ _____________ ___
Neave, William J. Cheeseman, and Foley Hoag & Eliot, were on brief
_____ ____________________
__________________
Computer

and

Business

Equipment Manufacturers

curiae.

_____________________

March 9, 1995
_____________________

Association,

ami

STAHL, Circuit Judge.

STAHL, Circuit Judge.
______________
decide

whether

computer

This appeal

menu

copyrightable subject matter.

requires us to

command

hierarchy

is

In particular, we must decide

whether, as the district court held, plaintiff-appellee Lotus

Development
computer

Corporation's

copyright

spreadsheet program,

appellant

Borland International,

the Lotus 1-2-3 menu command

Quattro Pro

was

in

Lotus

infringed by
Inc., when

1-2-3,

defendant-

Borland copied

hierarchy into its Quattro

computer spreadsheet

programs.

See
___

and

Lotus Dev.
__________

Corp. v. Borland Int'l, Inc., 788 F. Supp. 78 (D. Mass. 1992)

_____
___________________
("Borland I"); Lotus Dev. Corp. v. Borland Int'l, Inc., 799
_________
_________________
____________________
F. Supp. 203 (D. Mass. 1992) ("Borland II"); Lotus Dev. Corp.
__________
________________
v.

Borland Int'l, Inc., 831

____________________

F. Supp.

202 (D.

Mass. 1993)

("Borland III"); Lotus Dev. Corp. v. Borland Int'l, Inc., 831

___________

________________

___________________

F. Supp. 223 (D. Mass. 1993) ("Borland IV").

__________
I.
I.
__
Background
Background
__________
Lotus 1-2-3 is
users

to perform

computer.

a spreadsheet program

accounting functions

Users manipulate

that enables

electronically

and control the

on a

program via

series of menu commands, such as "Copy," "Print," and "Quit."

Users

choose commands

either

by highlighting

screen or by typing their first letter.

In

them on

the

all, Lotus 1-2-3

-33

has

469

submenus.

commands

arranged

into

more than

50

menus

and

Lotus

1-2-3, like

many computer

users to write what are called "macros."

a

user

single

can designate
macro keystroke.

commands in

to

series each

recall

and

command choices
execute that

time, the user

with a

series of
rather than

only needs

to

macro keystroke, causing the

perform the

commands automatically.

By writing a macro,

of the spreadsheet,

the single pre-programmed

program

of

Then, to

multiple parts

typing the whole

type

a series

programs, allows

designated

series

of

Thus, Lotus 1-2-3 macros shorten the

time needed to set up and operate the program.

Borland released
public in

1987, after

its first Quattro program

Borland's engineers had

its development for nearly

three years.

to the

labored over

Borland's objective

was to develop a spreadsheet program far superior to existing

programs, including Lotus 1-2-3.
the

time of

its

In Borland's words, "[f]rom

initial release

. .

Quattro

included

enormous innovations over competing spreadsheet products."

The district court found,

and Borland does not now

contest, that Borland included in its Quattro and Quattro Pro

version

1.0

programs "a

virtually identical
____________________

entire 1-2-3

menu tree."

Borland III, 831 F.

___________

Supp. at 212

so doing, Borland

did not copy

(emphasis
any

in original).

In

of Lotus's underlying computer

-44

copy of

the

code; it copied only the

words

and

Borland

structure

included the

programs to

make them

of

Lotus

be able

to

menu

command

menu command

compatible with

spreadsheet users who were

would

Lotus's

hierarchy.

hierarchy in

Lotus 1-2-3

its

so that

already familiar with Lotus 1-2-3

switch to

the

Borland programs

without

having to learn new commands or rewrite their Lotus macros.

In

its

Quattro

and

Quattro

Pro

programs, Borland achieved compatibility with

offering its

users an

Emulation Interface."

version

1.0

Lotus 1-2-3 by

alternate user interface,

the "Lotus

By activating the Emulation Interface,

Borland

users would

screens

and could interact with Quattro or Quattro Pro as if

using Lotus

see the

Lotus

1-2-3, albeit with a

screen and with

menu commands

slightly different looking

many Borland options not

1-2-3.

In effect,

wanted

to communicate

available on Lotus

Borland allowed users to choose

with Borland's

menu commands

on their

how they

spreadsheet programs:

either by

using

designed by

Borland, or

by

using the

commands and command structure used in Lotus 1-2-3

augmented by Borland-added commands.

Lotus

filed this

action

against

Borland in

the

District

of Massachusetts on July 2, 1990, four days after a

district

court held

taken as a

that the

whole --

Lotus 1-2-3

including the choice

"menu structure,
of command

[and] the structure and order of those terms,"

expression covered

by Lotus's copyrights.

terms

was protected

Lotus Dev. Corp.

________________

-55

v.

Paperback Software Int'l, 740

_________________________

Mass.

1990)

morning

("Paperback").1
_________

after the

of

infringement.

Three

days

Paperback decision,
_________

declaratory judgment
District

F. Supp.

action against

California,

seeking

On September 10, 1990,

70 (D.

earlier, on

Borland had

Lotus
a

37, 68,

in the

declaration

the

filed a
Northern
of

non-

the district court in

California dismissed Borland's declaratory judgment action in

favor of this action.
Lotus

and Borland filed

cross motions for summary

judgment; the district court denied both motions on March 20,

1992, concluding that "neither party's motion is supported by
the record."

Borland I, 788
_________

court invited

the parties

to file renewed

motions that would "focus

light of rulings it
of their summary

F. Supp. at 80.

The district

summary judgment

their arguments more precisely" in

had made in conjunction with

judgment motions.

Id. at 82.
___

its denial
Both parties

filed renewed motions for summary judgment on April 24, 1992.

In its motion, Borland
were

not

copyrightable

reasonable
between

contended that the Lotus 1-2-3

its

trier

as a

of fact

products

and

sustain a determination of

matter

could

of

find

Lotus 1-2-3
infringement.

law

and that

that the
was

menus
no

similarity

sufficient

to

Lotus contended in

____________________
1.

Judge Keeton presided over both the Paperback

_________
and this case.
-66

litigation

its motion that Borland had copied

Lotus 1-2-3's entire user

interface and had thereby infringed Lotus's copyrights.

On
Borland's

July

31,

motion and

district court

1992,

the

district

granted Lotus's motion

ruled that

the Lotus menu

court

denied

in part.

The

command hierarchy

was copyrightable expression because

[a] very satisfactory spreadsheet menu
tree can be constructed using different
commands
and
a
different
command
structure from those of Lotus 1-2-3. In
fact, Borland has constructed just such
an alternate tree for use in Quattro
Pro's native mode. Even if one holds the
arrangement of menu commands constant, it
is
possible
to
generate
literally
millions of satisfactory menu trees by
varying the menu commands employed.
Borland II, 799
___________

F.

Supp.

at

217.

The

district

court

demonstrated this by offering alternate command words for the

ten

commands that

appear in Lotus's

main menu.

Id.
___

For

example, the district court stated that "[t]he `Quit' command

could be

named `Exit' without any

that "[t]he `Copy' command

`Duplicate,'

`Imitate,'

`Reproduce,'

among others."

were possible,
developers'
reflected

the district
choice

and

in the Lotus

copyrightable expression.

other modifications," and

could be called `Clone,' `Ditto,'

`Mimic,'
Id.
___

`Replicate,'

and

Because so many variations

court concluded that

arrangement

menu command

of

the Lotus

command

terms,

hierarchy, constituted

-77

In granting partial summary judgment

district

court

held

that

Borland

had

to Lotus, the

infringed

Lotus's

copyright in Lotus 1-2-3:

[A]s a matter of law, Borland's Quattro
products
infringe
the
Lotus
1-2-3
copyright because of (1) the extent of
copying of the "menu commands" and "menu
structure" that is not genuinely disputed
_________
in this case, (2) the extent to which the
copied elements of the "menu commands"
and "menu structure" contain expressive
aspects separable from the functions of
the "menu commands" and "menu structure,"
and (3)
the scope of
those copied
expressive aspects as an integral part of
Lotus 1-2-3.
Borland II, 799 F. Supp. at
__________
court

nevertheless concluded

223 (emphasis in original).

that

while

the

Quattro

The
and

Quattro Pro programs infringed Lotus's copyright, Borland had

not copied

the entire Lotus

had contended.

1-2-3 user interface,

Accordingly, the court concluded that

as Lotus
a jury

trial

was

necessary to

infringement,
prompts2 of

including

determine
whether

the

scope of

Borland

Lotus 1-2-3, whether the

copied

Borland's
the

long

long prompts contained

____________________
2. Lotus 1-2-3 utilizes a two-line menu; the top line lists
the commands from which the user may choose, and the bottom
line displays what Lotus calls its "long prompts." The long
prompts explain, as
a sort of "help text," what the
highlighted menu command will do if entered.
For example,
the long prompt for the "Worksheet" command displays the
submenu that the "Worksheet" command calls up; it reads
"Global, Insert, Delete, Column, Erase, Titles, Window,
Status, Page."
The long prompt for the "Copy" command
explains what function the "Copy" command will perform:
"Copy a cell or range of cells."
The long prompt for the
"Quit" command reads, "End 1-2-3 session (Have you saved your
work?)."
-88

expressive elements,
constraints

and to what extent,

limited the

number

of possible

Lotus menu command hierarchy could

time of its creation.
Additionally,

the

if any, functional

court

the

have been arranged at the

See Borland III, 831 F.

___ ___________

district

ways that

granted

Supp. at 207.
Lotus

summary

judgment on Borland's affirmative

on its affirmative

defense of waiver, but not

defenses of laches and estoppel.

Borland
_______

II, 799 F. Supp. at 222-23.

__
Immediately following the district
judgment

decision,

Interface

from

spreadsheet

Borland

its

removed

products.

programs

no

menus to Borland users,

the

court's summary
Lotus

Emulation

Thereafter,

longer displayed

Borland's

the

Lotus 1-2-3

and as a result Borland

users could

no longer communicate with Borland's programs as if they were

using

Nonetheless,
compatible

more

sophisticated

Borland's
with Lotus

of

programs continued
1-2-3, for

called

the "Key Reader" in

turned

on,

the Key

version

Reader

Lotus
to

be partially

Borland retained

its Quattro Pro

allowed

1-2-3.

what it

programs.

Borland's programs

Once
to

____________________
Prior to trial, the parties agreed to exclude the
copying of the long prompts from the case; Lotus agreed not
to contend that Borland had copied the long prompts, Borland
agreed not to argue that it had not copied the long prompts,
and both sides agreed not to argue that the issue of whether
Borland had copied the long prompts was material to any other
issue in the case. See Borland III, 831 F. Supp. at 208.
___ ___________
-99

understand and perform

Key

Reader on, the

for display,

some Lotus 1-2-3

Borland programs used

interaction, and macro

they encountered a slash

key

for

any

macros.3

Lotus

execution, except

macro),

the

Quattro Pro menus

("/") key in a macro

1-2-3

With

in

when

(the starting

which

case

they

interpreted the macro as having been written for Lotus 1-2-3.

Accordingly, people who wrote
the

time needed to perform an operation in Lotus 1-2-3 could

still use
court

or purchased macros to shorten

those macros in Borland's programs.4

permitted

Lotus

to

file

The district

supplemental

complaint

alleging that the Key Reader infringed its copyright.

The parties agreed to
issues without a jury.

try the remaining

The district court held

liability
two trials,

the Phase I trial covering all remaining issues raised in the

original complaint (relating to the
the

Phase

II

trial

covering

Emulation Interface) and

all

issues

raised

supplemental complaint (relating to the Key Reader).

Phase

trial,

considerable

there

were

testimony

was

no

live

presented

affidavits and deposition excerpts.

witnesses,
in

the

in

the

At the
although
form

of

The district court ruled

upon evidentiary objections counsel interposed.

At the Phase

____________________
3. Because Borland's programs could no longer display the
Lotus menu command hierarchy to users, the Key Reader did not
allow debugging or modification of macros, nor did it permit
the execution of most interactive macros.
4.

See

Borland IV, 831 F. Supp. at 226-27, for

__________
detailed explanation of macros and the Key Reader.

more

of

whom

-1010

II

trial,

there

were

two

live witnesses,

each

demonstrated the programs for the district court.

After the close of the
court permitted Borland
affirmative

defense

Phase I trial, the district

to amend its

of "fair

answer to include

the

Because Borland

had

use."

presented all of the evidence supporting its fair-use defense

during the Phase
evidence
before
court

on fair

I trial,
use (as

the conclusion
considered

findings of fact.
court held

the defense

of the

Lotus's
See
___

but Lotus had

not presented
had not

Phase I trial),

motion

for

judgment

Fed. R. Civ. P. 52(c).

that Borland had

failed to show that

any

been raised
the district
on partial
The district
its use of

the

Lotus

1-2-3 menu

command

Interface was a fair use.

hierarchy

in its

Emulation

See Borland III, 831 F.

___ ___________

Supp. at

208.
In

its Phase I-trial

decision, the district court

found that "each of the Borland emulation interfaces contains

a

virtually identical copy of

the

1-2-3

menu

expression."

tree

is

the 1-2-3 menu

capable

of

tree and that

wide

Borland III, 831 F. Supp. at 218.

___________

court also rejected Borland's

and estoppel.

identical

of

The district

affirmative defenses of laches

Id. at 218-23.
___

In its Phase II-trial decision, the

found that

variety

Borland's Key
copy

of

the

district court

Reader file included

Lotus

menu

tree

"a virtually

structure,

but

first letters

of

-1111

represented in a
menu

different form

and with

command names in place of the full menu command names."

Borland IV, 831

__________

F. Supp. at 228.

In

other words, Borland's

programs no longer included the Lotus command terms, but only

their first letters.
menu

structure,

command names
expression

organization,

the

and

. constitute

found

Accordingly,

The district court held that "the Lotus

in

[Lotus

district

first

part

of

letters
the

1-2-3]."

court

held that

of

the

protectable

Id.
___

at

with

233.

its

Key

Reader, Borland had infringed Lotus's copyright.

Id. at 245.
___

The

affirmative

district

court

also

rejected

defenses of waiver, laches,

235-45.

The

district

injunction against

Borland's

estoppel, and fair use.

court

then

Borland, id.
___

entered

at 245, from

Id. at
___
permanent

which Borland

appeals.
This appeal concerns only Borland's copying
Lotus menu

command hierarchy

Borland's affirmative

into its Quattro

defenses to

such copying.

of the

programs and
Lotus has

not cross-appealed; in other words, Lotus does not contend on

appeal

that the district court erred in finding that Borland

had not copied

other elements

of Lotus 1-2-3,

screen displays.
II.
II.
___
Discussion
Discussion
__________

such as

its

-1212

On
factually

appeal,

Rather,

the unprotectable

contends

does

not

dispute

that

it

copied the words and arrangement of the Lotus menu

command hierarchy.
copied

Borland

that

the

copyrightable because

Borland argues that it "lawfully

menus

of Lotus

1-2-3."

menu

command

hierarchy

Lotus
it is

a system, method

Borland
is

not

of operation,

process, or procedure foreclosed from protection by 17 U.S.C.

102(b).
defenses.

Borland

also raises

number

of affirmative

-1313

A. Copyright Infringement Generally

____________________________________
To
must

establish

prove "(1)

copying

of

original."

copyright infringement,

ownership

constituent

of a

elements

valid
of

a plaintiff

copyright, and
the

work

that

(2)
are

Feist Publications, Inc. v. Rural Tel. Serv. Co.,

________________________
____________________

499 U.S. 340, 361 (1991); see also Data Gen. Corp. v. Grumman
___ ____ _______________
_______

Sys. Support Corp., 36 F.3d 1147, 1160 n.19 (1st Cir. 1994);
___________________
Concrete Mach. Co. v. Classic Lawn Ornaments, Inc., 843 F.2d
__________________
_____________________________
600, 605

(1st

copyright

and

Cir. 1988).
therefore

To

show ownership

satisfy

Feist's
_____

of a

first

valid

prong,

plaintiff must prove that the work as a whole is original and

that

the

plaintiff

formalities.

complied

with

applicable

See Engineering Dynamics, Inc.

___ ___________________________

Software, Inc., 26
_______________

F.3d 1335,

1340 (5th

statutory

v. Structural
__________

Cir. 1994).

"In

judicial proceedings, a certificate of copyright registration

constitutes
shifts

prima facie
___________

the burden to

evidence

the defendant

copyright is not valid."

of

copyrightability
to demonstrate

and

why the

Bibbero Sys., Inc. v. Colwell Sys.,

__________________
_____________

Inc., 893 F.2d 1104, 1106 (9th Cir. 1990); see also 17 U.S.C.
____
___ ____
410(c); Folio Impressions, Inc.
________________________
F.2d

v. Byer California, 937

________________

759, 763 (2d Cir. 1991) (presumption of validity may be

rebutted).
To

show actionable

copying and

Feist's
_____

second prong, a plaintiff must

alleged

infringer copied

therefore satisfy

first prove that the

plaintiff's copyrighted work

-1414

as a

factual

matter; to

direct

evidence

do this,
of

he or

factual

she may

copying

or,

either present
if

that

is

unavailable, evidence

that the alleged

infringer had access

to

work

the

the

copyrighted

copyrighted works

are so

that there was factual

843 F.2d at 606.

the copying

that

similar that

offending

the court

F.3d
The

at 1340;

see also
___ ____

may infer

Concrete
________

plaintiff must then prove that

of copyrighted material was so extensive that it

rendered

the offending

similar.

See Engineering Dynamics, 26 F.3d at 1341.

___ ____________________

and copyrighted

In this appeal, we are

Lotus menu command hierarchy
in

and

copying (i.e., probative similarity).

Engineering Dynamics, 26
_____________________
Mach.,
_____

and

works substantially

faced only with whether the

is copyrightable subject matter

the first instance, for Borland concedes that Lotus has a

valid

copyright in

factually copying
result,

Lotus 1-2-3
the Lotus

as a

whole5 and

menu command

admits to

hierarchy.

As

this appeal is in a very different posture from most

____________________
5. Computer
programs
receive copyright
protection as
"literary works."
See 17 U.S.C.
102(a)(1) (granting
___
protection to "literary works") and 17 U.S.C.
101 (defining
___
"literary works" as "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, phonorecords, film, tapes, disks, or cards, in
_____
which they are embodied" (emphasis added)); see also H.R.
___ ____
Rep. No. 1476, 94th Cong., 2d Sess. 54 (1976), reprinted in
_________ __
1976 U.S.C.C.A.N. 5659, 5667 ("The term `literary works' . .
. includes computer data bases, and computer programs to the
extent that they incorporate authorship in the programmer's
expression of original ideas, as distinguished from the ideas
themselves.").
-1515

copyright-infringement

cases,

for

copyright

infringement

generally turns on whether the defendant has copied protected

expression as
posture,

most

limited help

a factual matter.

Because of

copyright-infringement
to us

even with respect to

in deciding this

cases
appeal.

this different
provide
This

only

is true

those copyright-infringement cases that

deal with computers and computer software.

B. Matter of First Impression
______________________________
Whether

computer

menu

command

hierarchy

constitutes copyrightable subject matter is a matter of first

impression

in this court.

have touched
Inc.
____

While some other courts appear to

on it briefly

in dicta, see,
___

e.g., Autoskill,
____ __________

v. National Educ. Support Sys., Inc., 994

___________________________________

1495 n.23 (10th Cir.),

cert. denied, 114 S. Ct.

_____ ______

F.2d 1476,
307 (1993),

we know of no cases that deal with the copyrightability

menu

command hierarchy

other

elements

displays,

of

the

in issue).

standing on
user
Thus

its own

interface,

of a

(i.e., without
such

we are navigating

as

screen

in uncharted

waters.
Borland

vigorously

argues,

however,

that

the

Supreme Court charted our course more than 100 years ago when
it decided Baker v. Selden, 101 U.S. 99 (1879).
_____
______
Selden,
______

the

Court held

textbook in which he

that

Selden's

copyright over

explained his new way to

-1616

In Baker v.
_____
the

do accounting

did not

grant him a

system.6

monopoly on the

use of

his accounting

Borland argues:
The facts

of Baker v. Selden, and even

_____
______
the arguments advanced by the parties in
that case, are identical to those in this
case. The only difference is that the
"user interface" of Selden's system was
implemented by pen and paper rather than
by computer.
To

demonstrate that

Baker v.
_____

Selden and
______

involve accounting systems, Borland even

this

appeal both

supplied this court

with a video that, with special effects, shows Selden's paper

forms "melting" into a

computer screen and transforming into

Lotus 1-2-3.
We do not think

that Baker v. Selden is

_____
______

analogous to this appeal as Borland claims.

1-2-3

is a

computer spreadsheet,

horizontal rows and

accounting

ledger or

Lotus does

accounting

system.

monopoly over the

Of course, Lotus
such its

grid of

vertical columns certainly resembles

any

grids, however, are not

Selden,

and as

nearly as

other paper

spreadsheet.

at issue in this appeal

not claim

to have

Rather, this

Those

for, unlike

a monopoly

appeal

an

over its

involves Lotus's

commands it uses to operate

the computer.

Accordingly,

this

appeal

is

not,

as

Borland

contends,

"identical" to Baker v. Selden.

_____
______
C. Altai
_________

____________________
6. Selden's system of double-entry bookkeeping
almost-universal T-accounts system.

is the

now

-1717

Before we analyze
hierarchy

is

procedure, we
the Second

a system,

method

first consider

of

command

operation, process,

the applicability of

F.2d 693 (2d

designed its Altai test

_____

computer programs,

copyrighted as

Cir. 1992).7
to deal with

or

the test

is

paraphrased or

The Second
the fact that

"literary works,"

infringed by what is known as "nonliteral"

copying that

Lotus menu

Circuit set forth in Computer Assoc. Int'l, Inc.

____________________________

v. Altai, Inc., 982

____________
Circuit

whether the

can be

copying, which is

loosely paraphrased

rather

than

word

for word.

See
___

id.
___

at 701

(citing nonliteral-

copying cases); see also 3 Melville B. Nimmer & David Nimmer,

___ ____
Nimmer on Copyright
____________________
nonliteral-copying
similarities
share

the

indicate

13.03[A][1]
cases,

courts

are due merely to

same

underlying

that the

The Second

deal

this

situation

with

whether

with

specifically

must

When

idea or

whether

copied the

one

the

the two works

they

instead

Altai test to
_____

computer

computer

whether

first author's

Circuit designed its

in

faced with

determine

the fact that

second author

expression.

(1993).

program

context,
copied

nonliteral expression from another program's code.

____________________
7.

We consider the Altai test because both parties and many

_____
of the amici focus on it so heavily. Borland, in particular,
_____
is highly critical of the district court for not employing
the Altai test.
Borland does not, however, indicate how
_____
using that test would have been dispositive in Borland's
favor. Interestingly, Borland appears to contradict its own
reasoning at times by criticizing the applicability of the
Altai test.
_____
-1818

The Altai test involves three

_____
filtration,
courts to

and comparison.

appropriate

protectable

step requires

contained within it."

This step enables courts to identify

framework

expression

abstraction,

copied program's structure

each level of abstraction

Altai, 982 F.2d at 707.

_____
the

The abstraction

"dissect the allegedly

and isolate

steps:

from

within

which

unprotected

to

separate

ideas.

Second,

courts apply a "filtration" step

in which they examine

structural

level

components

determine whether
was `idea'
so

at

each

of

abstraction

their particular inclusion

or was dictated by

"the

at that

to

level

considerations of efficiency,

as to be necessarily incidental to that idea; required by

factors

external to

public domain."

the program itself;

Id.
___

Finally, courts

or taken

from the

compare the protected

elements of the infringed work (i.e., those that survived the

filtration
allegedly
sufficient

screening) to the
infringing work
copying

infringement.

of

to

corresponding elements
determine whether

protected

material

to

of the

there

was

constitute

Id. at 710.
___

In the

instant appeal, we are

alleged nonliteral copying of computer

not confronted with

code.

Rather, we are

faced with Borland's deliberate, literal copying of the Lotus

menu command hierarchy.
nonliteral

Thus,

copying occurred

we must determine not whether

in

some amorphous

sense,

but

-1919

rather whether the literal copying of

the Lotus menu command

hierarchy constitutes copyright infringement.

While the Altai test may provide a useful framework
_____
for

assessing

code, we find
the literal

the alleged
it to be of

nonliteral

copying of

little help in

copying of a menu

computer

assessing whether

command hierarchy constitutes

copyright infringement.

In

test in this context may

actually be misleading because,

instructing courts
to

encourage

them

fact, we

think that the

to abstract the various

to

find

base

level

Altai
_____
in

levels, it seems
that

includes

copyrightable subject matter that, if literally copied, would

make the
that

copier liable

base (or

literal) level

nonliteral-copying case
at

issue in

for copyright infringement.8

be

like Altai, it is
_____

this appeal.

command hierarchies

would not

We

down to

think that

While

at issue

in a

precisely what is
abstracting menu

their individual word

and menu

levels and then filtering idea from expression at that stage,

as

both the

obscures

Altai
_____

and the

the more

command hierarchy

district

fundamental
can be

court tests

question of

copyrighted at all.

require,

whether a
The

menu

initial

____________________
8.

We

recognize that

Altai never states that every work

_____
contains a copyrightable "nugget" of protectable expression.
Nonetheless, the implication is that for literal copying, "it
is not necessary to determine the level of abstraction at
which similarity ceases to consist of an `expression of
ideas,' because literal similarity by definition is always a
similarity as to the expression of ideas."
3 Melville B.
Nimmer & David Nimmer, Nimmer on Copyright
13.03[A](2)
____________________
(1993).
-2020

inquiry should not be whether individual components of a menu

command hierarchy are expressive, but rather whether the menu
command hierarchy as
Gates Rubber Co.
_________________

can be copyrighted.

But
___

v. Bando Chem. Indus., Ltd., 9

__________________________

(10th Cir. 1993)

comparison test

a whole

(endorsing Altai's
_____
as a way

see
___

F.3d 823

abstraction-filtration-

of determining whether

"menus and

sorting criteria" are copyrightable).

D.
The Lotus Menu Command Hierarchy:
A "Method of
_____________________________________________________________
Operation"
__________
Borland
hierarchy is

argues

that

the

Lotus

uncopyrightable because it is

menu

command

a system, method

of operation, process, or procedure foreclosed from copyright

protection

by 17

U.S.C.

102(b).

Section

102(b) states:

"In no case does copyright protection for an original work of

authorship extend to
method

of

any idea,

operation,

concept,

regardless of the form in

illustrated, or
that

the

principle,

we do

menu

system,

or

discovery,

which it is described,

explained,

embodied in such work."

Lotus

operation,

procedure, process,

command

not consider

Because we conclude

hierarchy

is

whether it

method

could also

of
be a

system, process, or procedure.

We think
is used

in

that "method of operation,"

102(b), refers

to the means by

as that term
which a person

operates something, whether it be a car, a food processor, or

a

computer.

Thus a text describing how to operate something

-2121

would

not

extend

copyright

operation itself; other

method of

the

people would be free to

method and to describe it in

a new

protection to

operation

other people would still

their own words.

is used

of

employ that
Similarly, if

rather than

be free to employ or

method

described,

describe that

method.
We hold that the Lotus menu command hierarchy is an
uncopyrightable

"method

command hierarchy

of

operation."

provides the means by

and operate Lotus 1-2-3.

Lotus

menu

which users control

If users wish to copy material, for

example, they use the "Copy" command.

material, they use the

The

If users wish to print

"Print" command.

command terms to tell the

Users must

computer what to do.

use the

Without the

menu command hierarchy, users would not be able to access and

control,

or indeed

capabilities.

make

use of,

Lotus 1-2-3's

functional

The Lotus
explain
the

menu command hierarchy

user; it also serves as the

different

from the

prompts are not

users

merely

and present Lotus 1-2-3's functional capabilities to

is operated and controlled.

is

does not

method by which the program

The Lotus menu command hierarchy

Lotus

long

necessary to the

could operate Lotus 1-2-3

prompts, for

the

operation of the
even if there

long

program;

were no long

-2222

prompts.9
different

The

Lotus

menu

hierarchy

is

also

from the Lotus screen displays, for users need not

"use" any expressive aspects of

to

command

the screen displays in order

operate Lotus 1-2-3; because the way the screens look has

little bearing on
displays

are

operation."10

how users control the

not

part

The Lotus

different from the

of
menu

Lotus

program, the screen

1-2-3's

command

underlying computer

"method

hierarchy is
code, because

of
also

while

code

is

necessary

formulation

for the

is not.

capabilities as

program

In other

Lotus 1-2-3,

Lotus's underlying

code (and

to

words,

work,
to offer

Borland did not

indeed it

its precise
the

same

have to

copy

did not);

to allow

users to operate its programs in substantially the same

however,
hierarchy.

Borland
Thus

had
the

to

copy
Lotus

the
1-2-3

Lotus
code

menu
is

way,

command
not

uncopyrightable "method of operation."11

____________________
9. As the Lotus long prompts are not before us on appeal, we
take no position on their copyrightability, although we do
note that a strong argument could be made that the brief
explanations they provide "merge" with the underlying idea of
explaining such functions. See Morrissey v. Procter & Gamble
___ _________
________________
Co., 379 F.2d 675, 678-79 (1st Cir. 1967) (when the possible
___
ways to express an idea are limited, the expression "merges"
with the idea and is therefore uncopyrightable; when merger
occurs, identical copying is permitted).
10. As they are not before us on appeal, we take no position
on whether the Lotus 1-2-3
screen displays constitute
original expression capable of being copyrighted.
11. Because the Lotus 1-2-3 code is not before us on appeal,
we take no position on whether it is copyrightable. We note,
however, that original computer codes generally are protected
-2323

The district court held that the Lotus menu command

hierarchy,

with

its

specific

choice

and

command terms,

constituted an "expression" of

operating

computer

program

hierarchically into menus

Supp. at 216.
decision to

operate

Lotus

reasoning, Lotus's

employ hierarchically arranged command

programs,

but

arranged
it did

specific command

had used.

terms to

not foreclose its competitors from

hierarchically

their

employing the

arranged

Borland II, 799 F.

___________

Under the district court's

employing

of

the "idea" of

commands

and submenus.

operate its program could

also

with

arrangement

terms

command

foreclose

terms

to

them

from

and arrangement

that

In effect, the district court limited Lotus

1-2-3's "method of operation" to an abstraction.

Accepting the

district

court's finding

that

the

Lotus developers made some expressive choices in choosing and

arranging the
that
Lotus

Lotus command terms, we

expression is not

copyrightable because it

1-2-3's "method of operation."

"methods of operation" are

they

are the means

words are

they are

part of a "method

We do

is part of

not think that

limited to abstractions;

by which a user

specific

____________________

nonetheless hold that

essential to

rather,

operates something.

operating something,

of operation" and, as

If
then

such, are

by copyright.

See, e.g., Altai, 982 F.2d at 702 ("It is now

___ ____ _____
well settled that the literal elements of computer programs,
i.e., their source and object codes, are the subject of
copyright protection.") (citing cases).
-2424

unprotectable.
typed

This is so whether

they must be highlighted,

in, or even spoken, as computer programs no doubt will

soon be controlled by spoken words.

The

fact that Lotus developers could have designed

the Lotus menu command hierarchy differently is immaterial to

the question of
other words,
menu

whether it is a

our initial

command

"method of operation."

inquiry is

hierarchy

not whether the

incorporates

any

In
Lotus

expression.12

Rather, our initial inquiry is whether the Lotus menu command

hierarchy
that

is a "method of operation."

users

command

operate Lotus

hierarchy, and

hierarchy is essential
inquire further

1-2-3

that the

by

Concluding, as we do,
using

entire Lotus

to operating Lotus

whether that method of

been designed differently.

the Lotus

menu

menu command

1-2-3, we do

not

operation could have

The "expressive" choices of what

to

name the

magically

command terms

and how

change the uncopyrightable

to arrange them

do not

menu command hierarchy

into copyrightable subject matter.

Our

holding that

"methods of

operation"

are not

limited to mere abstractions is bolstered by Baker v. Selden.

_____
______
In Baker, the Supreme Court explained that
_____
the teachings of science and the rules
and methods of useful art have their
final end in application and use; and
this application and use are what the
____________________
12.

We

think that

the

Altai test
_____

would contemplate

being the initial inquiry.

-2525

public derive from the publication of a

book which teaches them. . . . The
description of the art in a book, though
entitled to the benefit of copyright,
lays no foundation for an exclusive claim
to the art itself. The object of the one
is explanation; the object of the other
is use.
The former may be secured by

this

copyright.
The latter can
only be
secured, if it can be secured at all, by
letters-patent.
Baker v. Selden, 101
_____
______

U.S. at 104-05.

command hierarchy so that

Accordingly, it
copyright

falls

protection

people could learn it and

squarely within
established

codified by Congress in
In many
like

the

to

A VCR

Play, Reverse,
buttons

is a

v.

on

Selden and
______

video cassette
one to

Users operate VCRs by pressing

Fast Forward,
and

command hierarchy is

machine that enables

that are

are arranged

use it.

prohibition

Baker
_____

control, say,

watch and record video tapes.

buttons

menu

102(b).

buttons used

series of

in

the

ways, the Lotus menu

recorder ("VCR").

Lotus wrote its

typically labelled
Pause, Stop/Eject."

labeled

does

not

make

"Record,
That the
them

"literary work," nor does it make them an "expression" of the

abstract "method of
buttons.

operating" a

Instead, the buttons

VCR via a

set of

labeled

are themselves the "method of

operating" the VCR.

When a
by

highlighting

letter, he or

Lotus 1-2-3 user chooses

it on

the screen

or

a command, either

by typing

she effectively pushes a button.

-2626

its first

Highlighting

the

"Print" command on the screen, or typing the letter "P,"

is analogous to pressing a VCR button labeled "Play."

Just as one could not
would be impossible to

operate Lotus 1-2-3 without employing

its menu command hierarchy.

not

Thus the Lotus command terms are

equivalent to the labels

instead
labels

operate a buttonless VCR, it

equivalent to

on the VCR's

the buttons

buttons, but are

themselves.

Unlike the

on a VCR's buttons, which merely make operating a VCR

easier by

indicating the buttons' functions,

the Lotus menu

commands are essential to operating Lotus 1-2-3.

menu

commands, there

buttons,

as one

would be

could push

no way

Without the

to "push"

unlabeled VCR

the Lotus

buttons.

While

Lotus could probably have designed a user interface for which

the command

terms were mere labels,

Lotus 1-2-3 depends for

it did not do

its operation on use of

so here.

the precise

command terms that make up the Lotus menu command hierarchy.

One might
VCR

are not

argue that

analogous

computer program

to

do not

copyrightable

the

commands

for

operating a
operating

because VCRs are not copyrightable, whereas

computer programs are.

they

the buttons for

VCRs may not be

fit within
works;

any of the

the closest

copyrighted because
102(a)

they come

categories of
is "sculptural

work."

Sculptural works, however,

are subject to a "useful-

article" exception whereby "the design of a useful

.

. shall be considered

article .

a pictorial, graphic, or sculptural

-2727

work

only if,

and

only to

the

extent that,

incorporates pictorial, graphic, or sculptural

can

be

identified

separately

existing independently
article."

17

U.S.C.

of, the
101.

article having an intrinsic

merely

from,

and

"useful

design

features that

are

utilitarian

such

capable

of

aspects of

the

article" is

"an

utilitarian function that is not

to portray the appearance of the article or to convey

information."

Id.
___

Whatever expression there may be

arrangement of the parts of a VCR is

separately

in the

not capable of existing

from the VCR itself, so an ordinary VCR would not

be copyrightable.
Computer programs, unlike
as "literary works."

17 U.S.C.

VCRs, are
102(a).

copyrightable

Accordingly, one

might argue, the "buttons" used to operate a computer program

are not like the buttons used
not subject to

to operate a VCR, for they are

a useful-article exception.

The response, of

course, is that the arrangement of buttons on a VCR would not

be

copyrightable even

because

the

operation."

buttons

without

a useful-article

are

uncopyrightable

an

Similarly, the "buttons" of

exception,
"method

of

a computer program

are also an uncopyrightable "method of operation."

That the Lotus menu
of operation"
compatibility.

becomes

command hierarchy is a "method

clearer when

one

considers

Under Lotus's theory, if a user

different programs, he or

program

uses several

she must learn how to

perform the

-2828

same operation in a different way for each program used.

example, if the
then the
operating

user wanted the computer to

user would
the

have to

computer

such

print material,

learn not

just one

that

prints,

it

For

method of
but

many

different methods.
may

We find this absurd.

The fact that there

be many different ways to operate a computer program, or

even many different

ways to operate a computer program using

a set of hierarchically arranged command terms, does not make

the actual method of operation chosen copyrightable; it still
functions

as a method for operating the computer and as such

is uncopyrightable.
Consider
command

also

hierarchy in

court's holding, if
time needed
the user
time

macro

writing
the user

to perform a

would be

needed

program.

that

to

using

that

macros.

the

operation

the user would have to

other program's

menu

the

Lotus 1-2-3,

that macro to
same

district

to shorten

certain operation in

that

Lotus menu

Under the

wrote a macro

unable to use
perform

Rather,

users employ

shorten the
in

another

rewrite his or her

command hierarchy.

This is despite the fact that the macro is clearly the user's
own

work product.

We

think that forcing

the user to cause

the computer to perform the same operation in a different way

ignores

Congress's direction

operation" are

in

not copyrightable.

102(b) that
That programs

"methods of
can offer

users the ability to write macros in many different ways does

-2929

not

change the fact that, once written, the macro allows the

user to

perform an

menu command
macros, the

operation automatically.

hierarchy serves as
Lotus menu

As the

the basis for

command

hierarchy is

Lotus

Lotus 1-2-3
a "method

of

part

operation."
In
"method

of

understand

holding

that

operation"
ourselves

holding in Feist.
_____

expression

cannot
to

go

that is

be copyrighted,
against

the

we

Supreme

of
do

not

Court's

In Feist, the Court explained:

_____

The primary objective of copyright is not

to reward the labor of authors, but to
promote the Progress of
Science and
useful Arts.
To this end, copyright
assures authors the
right to
their
original
expression,
but
encourages
others to build freely upon the ideas and
information conveyed by a work.
Feist, 499 U.S. at 349-50 (quotations and citations omitted).
_____
We

do not think

assures

that the Court's

authors

the

indicates that all

while

original

right to

their

original

expression is necessarily
expression

we do

Courts must

still inquire whether

within

of

the

not

is

protection,

one

statement that "copyright

necessary

think that

categories

it is

expression"

copyrightable;
for

copyright

alone sufficient.

original expression falls

foreclosed

from

copyright

protection

by

102(b),

such

as

being

"method

of

there is

no

operation."
We also

note that

in most contexts,

need to "build" upon other people's expression, for the ideas

-3030

conveyed by that expression

can be conveyed by

without

author's expression.13

copying the

first

someone else
In

the

context of methods of operation, however, "building" requires

the use of the precise method of operation already
otherwise,

"building"

would

require

employed;

dismantling,

too.

Original developers are not the only people entitled to build

on the methods of
Borland may
designed and

build

operation they create; anyone can.

on the

may use

method

the Lotus

of operation
menu

Thus,

that

Lotus

command hierarchy

in

doing so.
Our holding
limited to
1495

n.23,

that

methods

of

operation

abstractions goes against Autoskill,

_________
in

which

the

Tenth

Circuit

are

not

994 F.2d at
rejected

the

defendant's
computer

program

"method
which

argument that
was

the

an

uncopyrightable

of operation" under
was designed to

deficiencies,

id.
___

at

keying procedure

used in

"procedure"

a
or

102(b).

The program at issue,

test and train

students with reading

1481,

required

students

to

select

responses

to the program's queries "by pressing the 1, 2, or

Id.
___

keys."

at 1495 n.23.

The Tenth

Circuit held that,

"for purposes of the preliminary injunction, . . . the record

showed
minimal

that [this]
degree

keying

procedure reflected

of creativity,"

as

required

at least
by Feist
_____

a
for

____________________
13. When there are a limited number of ways to express an
idea, however, the expression "merges" with the idea and
becomes uncopyrightable. Morrissey, 379 F.2d at 678-79.
_________
-3131

copyright protection.

Id.
___

As an initial matter, we question

whether

programmer's

response by pressing
importantly,

decision

to have

the 1, 2, or 3 keys

however,

we

fail

to

users

select

is original.

see

how

"a

More

student

select[ing] a response by pressing the 1, 2, or 3 keys," id.,

___
can be anything but an unprotectable method of operation.14
III.
III.
____
Conclusion
Conclusion
__________
Because

we

hold

that

the

Lotus

menu

command

hierarchy is uncopyrightable subject matter, we further

that Borland
it.

did not

Accordingly,

we

affirmative defenses.

infringe Lotus's copyright

need not

consider

any of

hold

by copying
Borland's

The judgment of the district court is

Reversed.
_________
Concurrence
___________
follows.
________

____________________
14. The Ninth Circuit has also indicated in dicta that
"menus, and keystrokes" may be copyrightable.
Brown Bag
__________

Software v. Symantec Corp., 960 F.2d 1465, 1477 (9th Cir.),

________
_______________
cert. denied, BB Asset Management, Inc. v. Symantec Corp.,
_____ ______
__________________________
______________
113 S. Ct. 198 (1992). In that case, however, the plaintiff
did not show that the defendant had copied the plaintiff's
menus or keystrokes, so the court was not directly faced with
whether the menus or keystrokes constituted an unprotectable
method of operation. Id.
___
-3232

BOUDIN, Circuit Judge,

_____________
this

case, and a slightly

the underlying problem,

concurring.

The importance

different emphasis in

prompt me to add a few

of

my view of
words to the

majority's tightly focused discussion.

I.
Most of the law of copyright and the "tools" of analysis
have

developed

novels, plays,
problem--simply
stimulate
by

in the
and

context

films.

stated,

if

of literary

In this

works

milieu, the

difficult

to

such as
principal

resolve--is

to

creative expression without unduly limiting access

others to the broader themes and concepts deployed by the

author.

The middle of the spectrum presents close cases; but

a "mistake" in providing too much protection involves a small

cost:

subsequent authors treating

the same themes must take

a few more steps away from the original expression.

The

problem

presented

by

computer

fundamentally different in one respect.

is

a means
_____

mechanical

for

causing

utility, an

the world's work.

have

some

of

the

something

programs

The computer program

to

happen;

instrumental role,

of

it

has

in accomplishing

Granting protection, in other

consequences

is

patent
______

words, can

protection

in

limiting other people's ability to perform a task in the most

efficient

manner.

Utility

does

not

bar

copyright

-31-31-

(dictionaries

may

be

copyrighted),

but

it

alters

the

calculus.
Of course, the argument for protection is
___

undiminished,

perhaps

even enhanced,

intellectual product,
provides

a temporary

incentives for

items in this class.

be different where
access

by utility:

if we

want more

monopoly for the

others to

create other,

of an
creator

different

But the "cost" side of the equation may

one places

a very high

value on

public

to a useful innovation that may be the most efficient

means of performing

a given

extending protection may be

task.

Thus,

the argument

the same; but the stakes

for

on the

other side are much higher.

It

is

preconditions
the

no

accident

that

are granted

This problem

patent

copyright protection

requirements of

patents

that

novelty
for a

of utility

protection

has

does not--notably,

and non-obviousness--and
shorter period

that

than copyrights.

has sometimes manifested

itself in

copyright cases, such as Baker v. Selden, 101 U.S. 99 (1879),

_____
______
and been

dealt with through various

formulations that limit

copyright or create limited rights to copy.

and

doctrine addressed

to

utility in

But the case law

copyright have

been

brief detours in the general march of copyright law.

Requests
the

for the protection

concern with

acute form.

fencing off

of computer

access to

menus present

the commons

in an

A new menu may be a creative work, but over time

-32-32-

its importance may come to reside more in the investment that

has been made by users
_____
their own
Better

in learning the menu and

in building

mini-programs--macros--in reliance upon

typewriter

keyboard

layouts

may

the menu.

exist,

but

the

familiar QWERTY keyboard dominates the market because that is

what everyone has learned to use.
Economics of QWERTY, 75
_____________________

See P. David, CLIO and the

___
____________

Am. Econ. Rev.

_______________

332 (1985).

The

QWERTY keyboard is nothing other than a menu of letters.

Thus, to assume that computer programs are just one more
new means of

expression, like

wrong.

"form"--the written

The

structure depicted

on the

a filmed play,
source

may be

code or

quite

the

menu

screen--look hauntingly like

the

familiar stuff of copyright; but the "substance" probably has

more

to

do with

already noted,
confronted
copyright

problems presented

in those rare

industrially
law

to computer

in

patent law

cases where copyright

useful

expressions.

programs

is

or, as
law has
Applying

like assembling

jigsaw puzzle whose pieces do not quite fit.

All of this

would make

no difference

if Congress

had

squarely confronted the issue,

as to

what should be done.

different course.
might be
very

The Copyright Act of 1976 took a

While Congress said that computer programs

subject to

general terms;

adopted a string

and given explicit directions

copyright protection,

it said

and, especially

102(b), Congress

in

this in

of exclusions that if taken literally might

-33-33-

easily

seem

protection.

to

exclude

The only

involve narrow

most

computer

programs

detailed prescriptions

issues (like back-up copies)

from

for computers
of no relevance

here.
Of

course,

congressional
copyright

one

could

command

still read

that

law be taken and

the

the

familiar

statute

as

doctrines

a
of

applied to computer programs, in

cookie cutter fashion, as if the programs were novels or play

scripts.
embody

Some of
this

the

approach.

different grounds:

cases
It

involving computer

seems

the tradition

to

me

mistaken

of copyright law,

programs
on

two

and the

likely intent of Congress.

The

broad-brush conception of copyright protection, the

time limits, and the formalities have long been prescribed by

statute.

But the heart

of copyright doctrine--what

protected and with what limitations and

developed by
cases.

the courts through

may be

exceptions--has been

experience with

individual

B. Kaplan, An Unhurried View of Copyright 40 (1967).

______________________________

Occasionally Congress addresses a problem in detail.

most part

the interstitial development of

For the

copyright through

the courts is our tradition.

Nothing in
1976

Act, or

the language
at

or legislative history

least nothing

brought

to our

of the

attention,

suggests that Congress meant the courts to abandon this caseby-case

approach.

Indeed,

by setting

up

102(b)

as

-34-34-

counterpoint

theme, Congress

tension and left

it for

has

arguably

the courts to

recognized

the

resolve through

the

development
adaptive:
________

of

case

law.

And

case

it allows new problems to

earlier doctrine, but

law

development

is

be solved with help of

it does not preclude

new doctrines to

meet new situations.

II.
In this case, the raw facts are mostly, if not entirely,
undisputed.
debatable,

Although the inferences to be drawn may be more

it is very hard to see that Borland has shown any

interest in the Lotus

menu except as a fall-back

option for

those users already committed to it by prior experience or in

order to run their own macros using 1-2-3 commands.
for

the amateur,

accessing the

Lotus menu

At least

in the

Borland

Quattro or Quattro Pro program takes some effort.

Put differently, it is unlikely that users who value the
Lotus menu
they

for its

have made

own sake--independent of

themselves

in learning

any investment

Lotus' commands

or

creating macros dependent upon them--would choose the Borland

program

in

order

Borland's success
rationale for

to

secure

access

is due primarily

deploying the

to

the

Lotus

menu.

to other features.

Lotus

menu bears

Lotus

menu

Its

the ring

of

truth.
Now,
commercial

any
use

use

of

the

and deprives

Lotus

-35-35-

of

by
a

Borland
portion

is
of

a
its

"reward," in the sense that an

would

increase

Lotus'

infringement claim if allowed

profits.

But

this

is

circular

reasoning: broadly speaking, every limitation on copyright or

privileged use diminishes the reward of the original creator.
Yet

not every

infringement.

writing
The

copyright

law, but

copyrights

would

is copyrightable

provision
it is
be

of reward

not the

perpetual

or

is one

only one.
and

every use

there

an

concern of
If

it were,

would

be

no

exceptions.
The present

case is

protection

of the menu.

"quit") are

largely for

an unattractive one
The menu

for copyright

commands (e.g., "print,"

____

standard procedures that

Lotus did

not invent and are common words that Lotus cannot monopolize.
What is
of

left is the particular

combination and sub-grouping

commands in a pattern devised by Lotus.

may have

a more

appealing logic and

This arrangement

ease of use

than some

other configurations; but there is a certain arbitrariness to

many of the choices.
If Lotus is

granted a monopoly

on this pattern,

users

who

have learned

devised their own

typist

who

the command
macros are

has learned

the

QWERTY keyboard

who had

such

Apparently,

had such

a monopoly on

sway in the market

of Lotus

locked into Lotus,

captive of anyone
a keyboard.

structure

1-2-3 or
just as

would

be the

the production

for a period

of

Lotus 1-2-3 has

that it has represented

the de
__

-36-36-

facto standard for electronic

_____

spreadsheet commands.

So long

as Lotus is the superior spreadsheet--either in quality or in

price--there may be nothing wrong with this advantage.
But if a better

spreadsheet comes along, it is

hard to

see why customers who have learned the Lotus menu and devised
macros for it should

remain captives of Lotus because

investment

in learning made by

Lotus

already reaped

has

first; assuming

the users and

substantial

of an

not by Lotus.

reward for

being

that the Borland program is now better, good

reasons exist for freeing it to

attract old Lotus customers:

to

enable the

advance,

old

customers to

and to reward Borland

product.

If

Borland has

take

advantage of

in turn for

not made

a better

new

making a better
product, then

customers will remain with Lotus anyway.

Thus, for me the question is not whether
prevail

but

on

what

basis.

traveled, but the main choices

menu

is not

protectable

doctrine that Borland's

perfect

and no

Various

avenues

might

are between holding that

by copyright

and

use is privileged.

intermediate

Borland should

appellate court

be
the

devising a

new

No solution

is

can make

the

final choice.
To

call the

menu a

"method of

operation" is,

common use of those words, a defensible position.

the purpose

of the menu

literary or pictorial art.

is not to be

in the

After all,

admired as a

work of

It is to transmit directions from

-37-37-

the user to the computer, i.e., to operate the computer.

____ __________

The

menu is also a "method" in the dictionary sense because it is

a "planned way of doing something," an "order or system," and
(aptly

here) an "orderly or systematic arrangement, sequence

or the like."

Random House Webster's College Dictionary 853

__________________________________________

(1991).
A different approach
is privileged
is

menu

because, in the context

not seeking

menu;

to appropriate

rather, having
of its

privileged
Borland

it

already described, it

the advances made

an arguably

is merely

macros.

approach
had

simply

not

copied

give former

own prior investment

The difference is
would

by Lotus'

more attractive

trying to

option to exploit their

or in
use

if

provided

own, Borland

Lotus users an
in learning

would be to say that Borland's use

that such

automatically
the

different codes), contributed nothing

protect

Lotus menu

(using

of its own, and resold

Lotus under the Borland label.

The

closest analogue

fair use doctrine.

Nation Enters.,
______________
Borland,

in conventional copyright

is the

E.g., Harper & Row, Publishers, Inc. v.

____ _______________________________

471 U.S.

539 (1985).

Although invoked

largely

been brushed

aside

it has

in this

by
case

because the Supreme Court has said that it is "presumptively"

unavailable where the use is a "commercial" one.
562.

See id. at
_______

But see Campbell v. Acuff-Rose Music, Inc., 114 S. Ct.

_______ ________
______________________

1164, 1174 (1994).

In my view, this is something less than a

-38-38-

definitive
and, in

answer;

"presumptively" does

any event, the doctrine

not

of fair use

mean "always"
was created by

the courts and can be adapted to new purposes.

But

a privileged

problems of its own.

on

use doctrine would

It might more closely tailor the limits

copyright protection

protection;

but it

problems that
reduce

the

Indeed,

to

the reasons
entail a

cause cost

ability of

standard in the

to

would

would

the

certainly involve

the

host of

Lotus'

industry, it

and would

to predict
menu

that

administrative

and delay,

industry

extent that

for limiting

is an

might be argued

also

outcomes.
important

that any

use

me and

its

ought to be deemed privileged.

In

sum,

formulation
occurs

to

the majority's
is as good, if

me now

as

result

persuades

not better, than

within the

reach

of

any other that

courts.

Some

solutions (e.g., a very short copyright period for menus) are

____

not options
all

at all for courts but might be for Congress.

events, the

linguistics,

choices are

and they

important ones of

should

be made

considerations in view.

-39-39-

with the

In

policy, not
underlying