Prior History: Appeal from the United States District Court for the District of Massachusetts, Hon. Robert E. Keeton, U.S. District Judge; Decision Overturned by United States Court of Appeals for the First Circuit, Hons. Toruella, Chief Judge, Boudin, and Stahl, Circuit Judges.
Counsel, Amicus Curiae on Record.
Opinion by Jo-Anne Kokoski, 24 October 1995
Whether a computer program's menu command structure may be protected by copyright, which the District Court held by the interpretation of the Congressional extension of copyright to computer programs in the same manner as literary works; or whether the First Circuit's opinion that Section 102(b) of the Copyright Act prohibits the protection of such a menu because it assists users in using the program, and can thereby be considered a method of operations, which is explicitly not offered copyright protection.
Lotus 1-2-3 is a computer spreadsheet program which allows users to perform accounting functions electronically using a computer. By highlighting menu commands such as "Print", "Copy" and "Quit", or by typing their first letter, the user can control the operation of the program. Lotus 1-2-3 has 50 menus and submenus which contain 469 commands.
An essential feature of the Lotus 1-2-3 spreadsheet program is its ability to allow users to write macros. This means that a user can program a series of commands into the spreadsheet program and designate it by a single macro keystroke. To later execute that series of commands, the user need only enter the macro of the series instead of repeatedly typing the string of commands into various locations in the spreadsheet. Once the macros are designated, the time needed to set-up and run the Lotus 1-2-3 spreadsheet is significantly shortened.
Borland released its spreadsheet program Quattro in 1987, after three yerars of development, and four years after the release of Lotus 1-2-3. The objective of Quattro's design team was to develop a spreadsheet program that was superior to existing programs. According to Borland, "from the time of its initial release...Quattro included enormous innovations over competing spreadsheet products."
Borland no longer contests that it included in its Quattro and Quattro Pro version 1.0 programs an effective copy of the entire Lotus 1-2-3 menu tree. None of Lotus's computer code was copied, however; only the words and structure of the Lotus 1-2-3 menu structure were repeated in the Quattro programs. Borland used the Lotus command hierarchy in its programs to allow compatibility with Lotus 1-2-3, so that users who were already familiar with Lotus 1-2-3 and had already learned its command procedures and had already written macros for that program, could switch to Borland without having to learn a new operating system. Borland included what is called the "Lotus Emulation Interface" in Quattro and Quattro Pro; users, by activating the Interface, would see the Lotus 1-2-3 menu commands on their screen and could use Quattro and Quattro Pro as if they were using Lotus 1-2-3, with a slightly different screen arrangement and many Borland options not available in Lotus 1-2-3.
After a summary judgment by the District Court which decreed that Borland had infringed on Lotus's copyright on 1-2-3, and that a jury trial was necessary to determine the exact scope of that infringement, Borland removed the Lotus Emulation Interface from Quattro and Quattro Pro. Borland left what is called a "Key Reader" in the programs, however; once activated, the Borland programs used its own menus for display, interaction, and macro execution, except when it encountered a slash key (/) in a macro, which the program thereby read as having been written for Lotus 1-2-3. This allowed users to continue using their Lotus macros in the Borland programs. Lotus then files a supplemental complaint alleging that the key reader infringed its copyright.
Lotus filed this action against Borland in 2 July 1990 in the District of Massachusetts, four days after the District Court held that the Lotus 1-2-3 "menu structure, taken as a whole--including the choice of command terms [and] the structure and order of those terms" was protected expression covered by Lotus's copyrights. Lotus Dev. Corp. v. Paperback Software Int'l, 740 F. Supp. 37, 68, 70 (D. Mass. 1990) Borland had filed a declaratory judgment action against Lotus three days earlier in the Northern District of California; that action was dismissed in favor of the action in Massachusetts District Court.
Both parties filed cross motions for summary judgment, and were denied on 20 March 1992. Borland and Lotus both refiled their motions on 24 April 1992. On 31 July 1992, the District Court denied Borland's motion and granted Lotus's motion in part. The Court ruled that the Lotus menu tree was copyrightable because
"[a] very satisfactory spreadsheet menu tree can be constructed using different commands and a different command structure from those in 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 the menu commands constant, it is possible to generate literally millions satisfactory menu trees by varying the menu commands employed."
Borland II, 799 F. Supp. at 217. The Court concluded that the existance of many menu variations granted Lotus copyright on the choice and arrangement of commands it used. This partial summary judgment held that Borland had infringed Lotus's copyright on 1-2-3:
"As 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 223. Although the Court held that Quattro and Quattro Pro infringed on Lotus's copyrights on 1-2-3, it also held that Borland had not copied the entire 1-2-3 interface as contended by Lotus, and therfore concluded that a jury trial was necessary.
It was at this point that Borland removed the Lotus Emulation Interface from its products, while leaving in the Key Reader. Lotus then filed a supplemental complaint alleging infringement by the key reader. Borland and Lotus agreed to settle the remaining issues without a jury. The District Court held two trials; the Phase I trial covered all issued raised in the original complaint relating to the Lotus Emulation Interface, and the Phase II trial which covered all the issues surrounding the supplemental complaint relating to the Key Reader.
After the Phase I trial, the District Court allowed Borland to adjust its defense to include fair use. Since Borland had presented all of its evidence on fair use at the Phase I trial, the Court decided that Borland had failed to show that its use of Lotus 1-2-3 menu structures in the Lotus Emulation Interface was fair use. See Borland III, 831 F. Supp. at 208. Additionally, the Court found that Borland's Lotus Emulation Interface contained a copy of Lotus's menu hierarchy, and also rejected Borland's defenses of laches and estoppel.
The District Court found, in its Phase II decision, that the key reader also contained a "virtually identical copy of the Lotus menu tree structure, but represented in a different form with different first letters of menu command names in place of the full command names." Borland IV, 831 F. Supp. at 228. By this opinion, the District Court decreed that "theLotus menu structure, organization, and first letters of the command names...constitute part of the protectable expression found in [Lotus 1-2-3]." Id. at 233. The District Court held that the Key Readerinfringed on Lotus's copyright, and also rejected Borland's defenses of waiver, laches, estoppel and fair use. A permanent injunction was then entered against Borland.
Borland submitted an appeal to the United States District Court of Appeals for the First Circuit, which was decided on 9 March 1995. Lotus did not cross-appeal; the issue being contested was Borland's copying of the Lotus menu tree into its Quattro programs and Borland's defenses to said coping. In its opinion, the First Circuit agreed with Borland's contention that the Lotus 1-2-3 menu tree is uncopyrightable because it is a method of operations, which is not afforded copyright protection under 17 U.S.C. @ 102(b). Section 102(b) states: "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." The First Circuit interpreted "method of operation" to refer to "the means by which a person operates something, whether it be a car, a food processor or a computer." Borland Appeal, No. 93-2214, and held that the Lotus menu hierarchy is an uncopyrightable method of operation. Because the First Circuit deemed Lotus's menu structure uncopyrightable, it did not even need to consider Borland's defenses, and with this reasoning overturned the District Court's decision.
Since the First Circuit's decision went against previous rulings in the Tenth, Ninth and Second Circuits, which had accepted the precedent of the District Court's finding for Lotus, this case now comes up before the Supreme Court for settlement.
The issue at the heart of this matter is whether or not Lotus's copyright on the 1-2-3 spreadsheet program extends to the menu hierarchy or if it merely covers the written code of the program.
Becasue the application of copyright protection to software is relatively new, we have little or no legal precedents to stand on. However, the Court already examined this issue in a different light--butone which is applicable now. It is useful to start with Baker v. Selden, 101 U.S. 99 (1879) when considering the way this suit should be resolved.
In Baker v. Selden, Selden claimed copyright infringement because Baker included in his book on accounting a ledger sheet very similar to the one Selden included in his own book, which Selden had a copyright. The issue here was whether or not people other than Selden could use similar ledger sheets without infringing Selden's copyright. The Court decided that Selden's copyright extended only to his explanation of the system, but not to the system itself. The Court felt that Selden was trying to get what is essentially patent protection through the application of his copyright.
Baker v. Selden also established the principle that the exclusive reproduction rights of copyright cannot prevent the use of unprotected ideas or practical features of functional works This is regardless of whether the ideas or features are expressed in literary or graphic form:
"The fact that the art described in the book by illustrations oflines and figures which are reproduced in practice in the application of the art, makes no difference...Had he used words of description instead of diagrams...there could not be the slightest doubt that others, applying the art in practical use, might lawfully draw the lines and diagrams...which he (the author) thus described by words in his book.
The copyright of a work on a mathematical science cannot give...an exclusive right to the methods of operation...or to the diagrams which he employs to explain them, so as to prevent an engineer from using them whenever the occasion requires."
Baker v.Selden, 101 U.S. at 103. Baker v. Selden is a case about the unprotectability of the functional content of written works and the rights of others to copy that content in order to make use of it--which leads directly to the question of the extension of copyright protection to the menu structure in Lotus 1-2-3.
It is by the reasoning presented in Baker v. Selden, and further enforced by the language of Section 102(b) of the Copyright Act cited previously (see Legal Background above), it can be concluded that the Lotus menu tree is in fact a method of operation, and can not be afforded copyright protection.
We agree with the interpretation of the First Circuit that a "method of operation" is meant to be the means by which people operate things. In this case, that something is a computer program, and the means by which that computer program is operated is its command menu. Lotus wrote the command menu expressly so people could use the program, and therefore it is a method of operation. We hold, therefore, that a computer program's command structure is non-copyrightable material.
The analogy is drawn to Baker v. Selden in the following way. Baker wanted to use the capabilities of Selden's 'program'--he wanted to use the ledger sheet; he did not have to copy Selden's book in order to get at the ledger sheet. If Borland wanted to offer the same capabilities as Lotus 1-2-3, it does not have to copy the computer code for the program; it need only copy its menu structure, its method of operation. Therefore, the command hierarchy is not a copyrightable piece of literature, as the code itself is considered.
The oft cited example of video cassette recorder is applicable here. This example contends that the menu hierarchy of a computer program is similar to the buttons on a VCR. The fact that the buttons on a VCR are arranged and labeled in a certain way does not make them copyrightable material. They are merely the means by which the functions of the VCR are executed. This is the very definition of method of operations. Similarly, the command menu of a computer program is a method of operation. The arrangement and labeling of the terms in the hierarchy are secondary to their function in operating the system. The program could not run withouth the menu, just as the VCR could not run without the buttons to tell it what to do.
The ruling does not go against the an earlier Court decision in the case of Feist. It was held in that case that:
"The primary objective of copyright is not to reward the labors of authors, but to promote the Progress of Science and the useful Arts. To this end, copyright assures authors the right to their original expression, but ecourages others to build freely upon the ideas and information conveyed in the work." 5~ Feist, 499 U.S. at 349-350. In fact, it is our belief that this strengthens Borland's case. This, in our opinion, is exactly what Borland did; it built upon Lotus's spreadsheet program in creating a program with capabilities that Lotus did not have. By including the Lotus 1-2-3 menu structure in this program, Borland allowed users who had already invested the time to learn Lotus 1-2-3 and to write extensive macros for it, to use that knowledge in what may be a better program--or at the very least, a program with more capapbilities. By not allowing Borland to use the menu, we would not be protecting the public interest. In effect, we would be denying some of the public, who had already made a considerable investment in learing 1-2-3, the opportunity to benefit from computer software advances. It is crucial to the development of software innovations to allow this compatibilty to continue.
Furthermore, Borland did not copy Lotus's menu structure because it had no other way to run its programs, or because it wanted to exactly duplicate all of 1-2-3's capabilities. It was done simply for the convenience of the user; Borland included a native menu structure in Quattro Pro.
It is therefore the finding of this Court that the command menu hierarchy of a computer program is considered to be a method of operation and is not considered copyrightable expression of the computer code.
Decision of the District Court of Massachusetts in the case of Lotus Dev. Corp. (Plaintiff) v. Borland Int'l Inc. (Defendant) Authored by Hon. Robert E. Keeton, released on 3 August 1992.
Decision of the First Circuit Court of Appeals, Lotus Dev. Corp. (Plaintiff Appellee) v. Borland Int'l Inc. (Defendant Appellant). Opinion by Judge Stahl, Concurrence by Judge Boudin, issued 9 March 1995. (http://swissnet.ai.mit.edu/6095/articles/int-prop/lotus-borland-appeal-Mar95.html)
Amicus Curiae of Copyright Law Professors, Filed on Appeal to theFirst Circuit.
Lotus Petition for a Writ of Certiorari, Filed 7 June 1995 (http://swissnet.ai.mit.edu/6095/articles/int-prop/lotus-cert-petition.html)
Borland's Brief in Opposition to Petition for Certiorari, Filed July 1995. (http://swissnet.ai.mit.edu/6095/articles/int-prop/borland-cert-opposition.html)
Lotus Reply in Support of Petition for Writ of Certiorari. (http://swissnet.ai.mit.edu/6095/articles/int-prop/lotus-cert-reply.html)
Samuelson, Pam. "How to Interpret the Lotus Decision (And How Not To)". _Communication of the ACM_, Volume 33, No.11, November 1990.