[695] Stephen D. Kahn, New York City (Stuart D. Levi, Beth K. Neelman, Carol A. Motyka, Weil, Gotshal & Manges, Michael A. [696] McElroy, Computer Associates Intern., Inc., of counsel), for plaintiff-appellant, cross-appellee.

Susan G. Braden, Washington, DC (Christ M. Kacoyannakis, Anderson Kill Olick & Oshinshy, Washington, DC, Stephen D. Susman, Susman Godfrey, Houston, TX, of counsel), for defendant-appellee, cross-appellant.

Bruce A. Lehman, Swidler & Berlin, Washington, DC, filed a brief amicus curiae, on behalf of The Software Publishers Ass'n.

Peter M.C. Choy, Mountain View, CA, filed a brief amicus curiae, on behalf of the American Committee for Interoperable Systems.

J. David Cabello, Houston, TX, David R. Bradford, Provo, UT, Robert H. Kohn, Scotts Valley, CA, filed a brief amici curiae, on behalf of Compaq Computer Corp., Novell, Inc., and Borland Intern., Inc.

Before ALTIMARI, MAHONEY and WALKER, Circuit Judges.

WALKER, Circuit Judge:

In recent years, the growth of computer science has spawned a number of challenging legal questions, particularly in the field of copyright law. As scientific knowledge advances, courts endeavor to keep pace, and sometimes--as in the area of computer technology--they are required to venture into less than familiar waters. This is not a new development, though. "From its beginning, the law of copyright has developed in response to significant changes in technology." Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 430, 104 S.Ct. 774, 782, 78 L.Ed.2d 574 (1984).

Article I, section 8 of the Constitution authorizes Congress "[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." The Supreme Court has stated that "[t]he economic philosophy behind the clause ... is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare...." Mazer v. Stein, 347 U.S. 201, 219, 74 S.Ct. 460, 471, 98 L.Ed. 630 (1954). The author's benefit, however, is clearly a "secondary" consideration. See United States v. Paramount Pictures, Inc., 334 U.S. 131, 158, 68 S.Ct. 915, 929, 92 L.Ed. 1260 (1948). "[T]he ultimate aim is, by this incentive, to stimulate artistic creativity for the general public good." Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156, 95 S.Ct. 2040, 2044, 45 L.Ed.2d 84 (1975).

Thus, the copyright law seeks to establish a delicate equilibrium. On the one hand, it affords protection to authors as an incentive to create, and, on the other, it must appropriately limit the extent of that protection so as to avoid the effects of monopolistic stagnation. In applying the federal act to new types of cases, courts must always keep this symmetry in mind. Id.

Among other things, this case deals with the challenging question of whether and to what extent the "non-literal" aspects of a computer program, that is, those aspects that are not reduced to written code, are protected by copyright. While a few other courts have already grappled with this issue, this case is one of first impression in this circuit. As we shall discuss, we find the results reached by other courts to be less than satisfactory. Drawing upon long-standing doctrines of copyright law, we take an approach that we think better addresses the practical difficulties embedded in these types of cases. In so doing, we have kept in mind the necessary balance between creative incentive and industrial competition.

This appeal comes to us from the United States District Court for the Eastern District of New York, the Honorable George C. Pratt, Circuit Judge, sitting by designation. By Memorandum and Order entered August 12, 1991, Judge Pratt found that defendant Altai, Inc.'s ("Altai"), OSCAR 3.4 computer program had infringed plaintiff Computer Associates' ("CA"), copyrighted computer program entitled CA-SCHEDULER. Accordingly, the district court awarded CA $364,444 in actual damages and apportioned profits. Altai has [697] abandoned its appeal from this award. With respect to CA's second claim for copyright infringement, Judge Pratt found that Altai's OSCAR 3.5 program was not substantially similar to a portion of CA-SCHEDULER called ADAPTER, and thus denied relief. Finally, the district court concluded that CA's state law trade secret misappropriation claim against Altai had been preempted by the federal Copyright Act. CA appealed from these findings.

Because we are in full agreement with Judge Pratt's decision and in substantial agreement with his careful reasoning regarding CA's copyright infringement claim, we affirm the district court's judgment on that issue. However, we vacate the district court's preemption ruling with respect to CA's trade secret claim, and remand the case to the district court for further proceedings.

BACKGROUND

We assume familiarity with the facts set forth in the district court's comprehensive and scholarly opinion. See Computer Assocs. Int'l., Inc. v. Altai, Inc., 775 F.Supp. 544, 549-55 (E.D.N.Y.1991). Thus, we summarize only those facts necessary to resolve this appeal.

I. COMPUTER PROGRAM DESIGN

Certain elementary facts concerning the nature of computer programs are vital to the following discussion. The Copyright Act defines a computer program as "a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result." 17 U.S.C. § 101. In writing these directions, the programmer works "from the general to the specific." Whelan Assocs., Inc. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1229 (3d Cir.1986), cert. denied, 479 U.S. 1031, 107 S.Ct. 877, 93 L.Ed.2d 831 (1987). See generally Steven R. Englund, Note, Idea, Process, or Protected Expression?: Determining the Scope of Copyright Protection of the Structure of Computer Programs, 88 MICH.L.REV. 866, 867-73 (1990) (hereinafter "Englund"); Peter S. Menell, An Analysis of the Scope of Copyright Protection for Application Programs, 41 STAN.L.REV. 1045, 1051-57 (1989) (hereinafter "Menell"); Mark T. Kretschmer, Note, Copyright Protection For Software Architecture: Just Say No!, 1988 COLUM.BUS.L.REV. 823, 824-27 (1988) (hereinafter "Kretschmer"); Peter G. Spivack, Comment, Does Form Follow Function? The Idea/Expression Dichotomy In Copyright Protection of Computer Software, 35 U.C.L.A.L.REV. 723, 729-31 (1988) (hereinafter "Spivack").

The first step in this procedure is to identify a program's ultimate function or purpose. An example of such an ultimate purpose might be the creation and maintenance of a business ledger. Once this goal has been achieved, a programmer breaks down or "decomposes" the program's ultimate function into "simpler constituent problems or 'subtasks,' " Englund, at 870, which are also known as subroutines or modules. See Spivack, at 729. In the context of a business ledger program, a module or subroutine might be responsible for the task of updating a list of outstanding accounts receivable. Sometimes, depending upon the complexity of its task, a subroutine may be broken down further into sub-subroutines.

Having sufficiently decomposed the program's ultimate function into its component elements, a programmer will then arrange the subroutines or modules into what are known as organizational or flow charts. Flow charts map the interactions between modules that achieve the program's end goal. See Kretschmer, at 826.

In order to accomplish these intra-program interactions, a programmer must carefully design each module's parameter list. A parameter list, according to the expert appointed and fully credited by the district court, Dr. Randall Davis, is "the information sent to and received from a subroutine." See Report of Dr. Randall Davis, at 12. The term "parameter list" refers to the form in which information is passed between modules (e.g. for accounts receivable, the designated time frame and particular customer identifying number) and the information's actual content (e.g. [698] 8/91-7/92; customer No. 3). Id. With respect to form, interacting modules must share similar parameter lists so that they are capable of exchanging information.

"The functions of the modules in a program together with each module's relationships to other modules constitute the 'structure' of the program." Englund, at 871. Additionally, the term structure may include the category of modules referred to as "macros." A macro is a single instruction that initiates a sequence of operations or module interactions within the program. Very often the user will accompany a macro with an instruction from the parameter list to refine the instruction (e.g. current total of accounts receivable (macro), but limited to those for 8/91 to 7/92 from customer No. 3 (parameters)).

In fashioning the structure, a programmer will normally attempt to maximize the program's speed, efficiency, as well as simplicity for user operation, while taking into consideration certain externalities such as the memory constraints of the computer upon which the program will be run. See id.; Kretschmer, at 826; Menell, at 1052. "This stage of program design often requires the most time and investment." Kretschmer, at 826.

Once each necessary module has been identified, designed, and its relationship to the other modules has been laid out conceptually, the resulting program structure must be embodied in a written language that the computer can read. This process is called "coding," and requires two steps. Whelan, 797 F.2d at 1230. First, the programmer must transpose the program's structural blue-print into a source code. This step has been described as "comparable to the novelist fleshing out the broad outline of his plot by crafting from words and sentences the paragraphs that convey the ideas." Kretschmer, at 826. The source code may be written in any one of several computer languages, such as COBAL, FORTRAN, BASIC, EDL, etc., depending upon the type of computer for which the program is intended. Whelan, 797 F.2d at 1230. Once the source code has been completed, the second step is to translate or "compile" it into object code. Object code is the binary language comprised of zeros and ones through which the computer directly receives its instructions. Id. at 1230-31; Englund, at 868 & n. 13.

After the coding is finished, the programmer will run the program on the computer in order to find and correct any logical and syntactical errors. This is known as "debugging" and, once done, the program is complete. See Kretschmer, at 826-27.

II. FACTS

CA is a Delaware corporation, with its principal place of business in Garden City, New York. Altai is a Texas corporation, doing business primarily in Arlington, Texas. Both companies are in the computer software industry--designing, developing and marketing various types of computer programs.

The subject of this litigation originates with one of CA's marketed programs entitled CA-SCHEDULER. CA-SCHEDULER is a job scheduling program designed for IBM mainframe computers. Its primary functions are straightforward: to create a schedule specifying when the computer should run various tasks, and then to control the computer as it executes the schedule. CA-SCHEDULER contains a sub-program entitled ADAPTER, also developed by CA. ADAPTER is not an independently marketed product of CA; it is a wholly integrated component of CA-SCHEDULER and has no capacity for independent use.

Nevertheless, ADAPTER plays an extremely important role. It is an "operating system compatibility component," which means, roughly speaking, it serves as a translator. An "operating system" is itself a program that manages the resources of the computer, allocating those resources to other programs as needed. The IBM System 370 family of computers, for which CA-SCHEDULER was created, is, depending upon the computer's size, designed to contain one of three operating systems: DOS/VSE, MVS, or CMS. As the district court noted, the general rule is that "a [699] program written for one operating system, e.g., DOS/VSE, will not, without modification, run under another operating system such as MVS." Computer Assocs., 775 F.Supp. at 550. ADAPTER's function is to translate the language of a given program into the particular language that the computer's own operating system can understand.

The district court succinctly outlined the manner in which ADAPTER works within the context of the larger program. In order to enable CA-SCHEDULER to function on different operating systems, CA divided the CA-SCHEDULER into two components:

--a first component that contains only the task-specific portions of the program, independent of all operating system issues, and

--a second component that contains all the interconnections between the first component and the operating system.

In a program constructed in this way, whenever the first, task-specific, component needs to ask the operating system for some resource through a "system call", it calls the second component instead of calling the operating system directly.

The second component serves as an "interface" or "compatibility component" between the task-specific portion of the program and the operating system. It receives the request from the first component and translates it into the appropriate system call that will be recognized by whatever operating system is installed on the computer, e.g., DOS/VSE, MVS, or CMS. Since the first, task-specific component calls the adapter component rather than the operating system, the first component need not be customized to use any specific operating system. The second, interface, component insures that all the system calls are performed properly for the particular operating system in use.

Id. at 551.

ADAPTER serves as the second, "common system interface" component referred to above.

A program like ADAPTER, which allows a computer user to change or use multiple operating systems while maintaining the same software, is highly desirable. It saves the user the costs, both in time and money, that otherwise would be expended in purchasing new programs, modifying existing systems to run them, and gaining familiarity with their operation. The benefits run both ways. The increased compatibility afforded by an ADAPTER-like component, and its resulting popularity among consumers, makes whatever software in which it is incorporated significantly more marketable.

Starting in 1982, Altai began marketing its own job scheduling program entitled ZEKE. The original version of ZEKE was designed for use in conjunction with a VSE operating system. By late 1983, in response to customer demand, Altai decided to rewrite ZEKE so that it could be run in conjunction with an MVS operating system.

At that time, James P. Williams ("Williams"), then an employee of Altai and now its President, approached Claude F. Arney, III ("Arney"), a computer programmer who worked for CA. Williams and Arney were longstanding friends, and had in fact been co-workers at CA for some time before Williams left CA to work for Altai's predecessor. Williams wanted to recruit Arney to assist Altai in designing an MVS version of ZEKE.

At the time he first spoke with Arney, Williams was aware of both the CA-SCHEDULER and ADAPTER programs. However, Williams was not involved in their development and had never seen the codes of either program. When he asked Arney to come work for Altai, Williams did not know that ADAPTER was a component of CA-SCHEDULER.

Arney, on the other hand, was intimately familiar with various aspects of ADAPTER. While working for CA, he helped improve the VSE version of ADAPTER, and was permitted to take home a copy of ADAPTER'S source code. This apparently developed into an irresistible habit, for when Arney left CA to work for Altai in January, 1984, he took with him copies of [700] the source code for both the VSE and MVS versions of ADAPTER. He did this in knowing violation of the CA employee agreements that he had signed.

Once at Altai, Arney and Williams discussed design possibilities for adapting ZEKE to run on MVS operating systems. Williams, who had created the VSE version of ZEKE, thought that approximately 30% of his original program would have to be modified in order to accommodate MVS. Arney persuaded Williams that the best way to make the needed modifications was to introduce a "common system interface" component into ZEKE. He did not tell Williams that his idea stemmed from his familiarity with ADAPTER. They decided to name this new component-program OSCAR.

Arney went to work creating OSCAR at Altai's offices using the ADAPTER source code. The district court accepted Williams' testimony that no one at Altai, with the exception of Arney, affirmatively knew that Arney had the ADAPTER code, or that he was using it to create OSCAR/VSE. However, during this time period, Williams' office was adjacent to Arney's. Williams testified that he and Arney "conversed quite frequently" while Arney was "investigating the source code of ZEKE" and that Arney was in his office "a number of times daily, asking questions." In three months, Arney successfully completed the OSCAR/VSE project. In an additional month he developed an OSCAR/MVS version. When the dust finally settled, Arney had copied approximately 30% of OSCAR's code from CA's ADAPTER program.

The first generation of OSCAR programs was known as OSCAR 3.4. From 1985 to August 1988, Altai used OSCAR 3.4 in its ZEKE product, as well as in programs entitled ZACK and ZEBB. In late July 1988, CA first learned that Altai may have appropriated parts of ADAPTER. After confirming its suspicions, CA secured copyrights on its 2.1 and 7.0 versions of CA-SCHEDULER. CA then brought this copyright and trade secret misappropriation action against Altai.

Apparently, it was upon receipt of the summons and complaint that Altai first learned that Arney had copied much of the OSCAR code from ADAPTER. After Arney confirmed to Williams that CA's accusations of copying were true, Williams immediately set out to survey the damage. Without ever looking at the ADAPTER code himself, Williams learned from Arney exactly which sections of code Arney had taken from ADAPTER.

Upon advice of counsel, Williams initiated OSCAR's rewrite. The project's goal was to save as much of OSCAR 3.4 as legitimately could be used, and to excise those portions which had been copied from ADAPTER. Arney was entirely excluded from the process, and his copy of the ADAPTER code was locked away. Williams put eight other programmers on the project, none of whom had been involved in any way in the development of OSCAR 3.4. Williams provided the programmers with a description of the ZEKE operating system services so that they could rewrite the appropriate code. The rewrite project took about six months to complete and was finished in mid-November 1989. The resulting program was entitled OSCAR 3.5.

From that point on, Altai shipped only OSCAR 3.5 to its new customers. Altai also shipped OSCAR 3.5 as a "free upgrade" to all customers that had previously purchased OSCAR 3.4. While Altai and Williams acted responsibly to correct Arney's literal copying of the ADAPTER program, copyright infringement had occurred.

After CA originally instituted this action in the United States District Court for the District of New Jersey, the parties stipulated its transfer in March, 1989, to the Eastern District of New York where it was assigned to Judge Jacob Mishler. On October 26, 1989, Judge Mishler transferred the case to Judge Pratt who was sitting in the district court by designation. Judge Pratt conducted a six day trial from March 28 through April 6, 1990. He entered judgment on August 12, 1991, and this appeal followed.

[701] DISCUSSION

While both parties originally appealed from different aspects of the district court's judgment, Altai has now abandoned its appellate claims. In particular, Altai has conceded liability for the copying of ADAPTER into OSCAR 3.4 and raises no challenge to the award of $364,444 in damages on that score. Thus, we address only CA's appeal from the district court's rulings that: (1) Altai was not liable for copyright infringement in developing OSCAR 3.5; and (2) in developing both OSCAR 3.4 and 3.5, Altai was not liable for misappropriating CA's trade secrets.

CA makes two arguments. First, CA contends that the district court applied an erroneous method for determining whether there exists substantial similarity between computer programs, and thus, erred in determining that OSCAR 3.5 did not infringe the copyrights held on the different versions of its CA-SCHEDULER program. CA asserts that the test applied by the district court failed to account sufficiently for a computer program's non-literal elements. Second, CA maintains that the district court erroneously concluded that its state law trade secret claims had been preempted by the federal Copyright Act. See 17 U.S.C. § 301(a). We shall address each argument in turn.

I. COPYRIGHT INFRINGEMENT

In any suit for copyright infringement, the plaintiff must establish its ownership of a valid copyright, and that the defendant copied the copyrighted work. See Novelty Textile Mills, Inc. v. Joan Fabrics Corp., 558 F.2d 1090, 1092 (2d Cir.1977); see also 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.01, at 13-4 (1991) (hereinafter "Nimmer"). The plaintiff may prove defendant's copying either by direct evidence or, as is most often the case, by showing that (1) the defendant had access to the plaintiff's copyrighted work and (2) that defendant's work is substantially similar to the plaintiff's copyrightable material. See Walker v. Time Life Films, Inc., 784 F.2d 44, 48 (2d Cir.), cert. denied, 476 U.S. 1159, 106 S.Ct. 2278, 90 L.Ed.2d 721 (1986).

For the purpose of analysis, the district court assumed that Altai had access to the ADAPTER code when creating OSCAR 3.5. See Computer Assocs., 775 F.Supp. at 558. Thus, in determining whether Altai had unlawfully copied protected aspects of CA's ADAPTER, the district court narrowed its focus of inquiry to ascertaining whether Altai's OSCAR 3.5 was substantially similar to ADAPTER. Because we approve Judge Pratt's conclusions regarding substantial similarity, our analysis will proceed along the same assumption.

As a general matter, and to varying degrees, copyright protection extends beyond a literary work's strictly textual form to its non-literal components. As we have said, "[i]t is of course essential to any protection of literary property ... that the right cannot be limited literally to the text, else a plagiarist would escape by immaterial variations." Nichols v. Universal Pictures Co., 45 F.2d 119, 121 (2d Cir.1930) (L. Hand, J.), cert. denied, 282 U.S. 902, 51 S.Ct. 216, 75 L.Ed. 795 (1931). Thus, where "the fundamental essence or structure of one work is duplicated in another," 3 Nimmer, § 13.03[A], at 13-24, courts have found copyright infringement. See, e.g., Horgan v. Macmillan, 789 F.2d 157, 162 (2d Cir.1986) (recognizing that a book of photographs might infringe ballet choreography); Twentieth Century-Fox Film Corp. v. MCA, Inc., 715 F.2d 1327, 1329 (9th Cir.1983) (motion picture and television series); Sid & Marty Krofft Television Prods., Inc. v. McDonald's Corp., 562 F.2d 1157, 1167 (9th Cir.1977) (television commercial and television series); Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 55 (2d Cir.), cert. denied, 298 U.S. 669, 56 S.Ct. 835, 80 L.Ed. 1392 (1936) (play and motion picture); accord Stewart v. Abend, 495 U.S. 207, 238, 110 S.Ct. 1750, 1769, 109 L.Ed.2d 184 (1990) (recognizing that motion picture may infringe copyright in book by using its "unique setting, characters, plot, and sequence of events"). This black letter proposition is the springboard for our discussion.

[702] A. Copyright Protection for the Non-literal Elements of Computer Programs

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. See Whelan, 797 F.2d at 1233 (source and object code); CMS Software Design Sys., Inc. v. Info Designs, Inc., 785 F.2d 1246, 1247 (5th Cir.1986) (source code); Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1249 (3d Cir.1983), cert. dismissed, 464 U.S. 1033, 104 S.Ct. 690, 79 L.Ed.2d 158 (1984) (source and object code); Williams Elecs., Inc. v. Artic Int'l, Inc., 685 F.2d 870, 876-77 (3d Cir.1982) (object code). Here, as noted earlier, Altai admits having copied approximately 30% of the OSCAR 3.4 program from CA's ADAPTER source code, and does not challenge the district court's related finding of infringement.

In this case, the hotly contested issues surround OSCAR 3.5. As recounted above, OSCAR 3.5 is the product of Altai's carefully orchestrated rewrite of OSCAR 3.4. After the purge, none of the ADAPTER source code remained in the 3.5 version; thus, Altai made sure that the literal elements of its revamped OSCAR program were no longer substantially similar to the literal elements of CA's ADAPTER.

According to CA, the district court erroneously concluded that Altai's OSCAR 3.5 was not substantially similar to its own ADAPTER program. CA argues that this occurred because the district court "committed legal error in analyzing [its] claims of copyright infringement by failing to find that copyright protects expression contained in the non-literal elements of computer software." We disagree.

CA argues that, despite Altai's rewrite of the OSCAR code, the resulting program remained substantially similar to the structure of its ADAPTER program. As discussed above, a program's structure includes its non-literal components such as general flow charts as well as the more specific organization of inter-modular relationships, parameter lists, and macros. In addition to these aspects, CA contends that OSCAR 3.5 is also substantially similar to ADAPTER with respect to the list of services that both ADAPTER and OSCAR obtain from their respective operating systems. We must decide whether and to what extent these elements of computer programs are protected by copyright law.

The statutory terrain in this area has been well explored. See Lotus Dev. Corp. v. Paperback Software Int'l, 740 F.Supp. 37, 47-51 (D.Mass.1990); see also Whelan, 797 F.2d at 1240-42; Englund, at 885-90; Spivack, at 731-37. The Copyright Act affords protection to "original works of authorship fixed in any tangible medium of expression...." 17 U.S.C. § 102(a). This broad category of protected "works" includes "literary works," id. at § 102(a)(1), which are defined by the Act as

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. While computer programs are not specifically listed as part of the above statutory definition, the legislative history leaves no doubt that Congress intended them to be considered literary works. See H.R.Rep. No. 1476, 94th Cong., 2d Sess. 54, reprinted in 1976 U.S.C.C.A.N. 5659, 5667 (hereinafter "House Report" ); Whelan, 797 F.2d at 1234; Apple Computer, 714 F.2d at 1247.

The syllogism that follows from the foregoing premises is a powerful one: if the non-literal structures of literary works are protected by copyright; and if computer programs are literary works, as we are told by the legislature; then the non-literal structures of computer programs are protected by copyright. See Whelan, 797 F.2d at 1234 ("By analogy to other literary works, it would thus appear that the copyrights of computer programs can be infringed even absent copying of the literal elements of the program."). We have no reservation in joining the company of those courts that have already ascribed to this logic. See, e.g., Johnson Controls, Inc. v. [703] Phoenix Control Sys., Inc., 886 F.2d 1173, 1175 (9th Cir.1989); Lotus Dev. Corp., 740 F.Supp. at 54; Digital Communications Assocs., Inc. v. Softklone Distrib. Corp., 659 F.Supp. 449, 455-56 (N.D.Ga.1987); Q-Co Industries, Inc. v. Hoffman, 625 F.Supp. 608, 615 (S.D.N.Y.1985); SAS Inst., Inc. v. S & H Computer Sys., Inc., 605 F.Supp. 816, 829-30 (M.D.Tenn.1985). However, that conclusion does not end our analysis. We must determine the scope of copyright protection that extends to a computer program's non-literal structure.

As a caveat, we note that our decision here does not control infringement actions regarding categorically distinct works, such as certain types of screen displays. These items represent products of computer programs, rather than the programs themselves, and fall under the copyright rubric of audiovisual works. If a computer audiovisual display is copyrighted separately as an audiovisual work, apart from the literary work that generates it (i.e., the program), the display may be protectable regardless of the underlying program's copyright status. See Stern Elecs., Inc. v. Kaufman, 669 F.2d 852, 855 (2d Cir.1982) (explaining that an audiovisual works copyright, rather than a copyright on the underlying program, extended greater protection to the sights and sounds generated by a computer video game because the same audiovisual display could be generated by different programs). Of course, the copyright protection that these displays enjoy extends only so far as their expression is protectable. See Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204, 209 (9th Cir.1988). In this case, however, we are concerned not with a program's display, but the program itself, and then with only its non-literal components. In considering the copyrightability of these components, we must refer to venerable doctrines of copyright law.

1) Idea vs. Expression Dichotomy

It is a fundamental principle of copyright law that a copyright does not protect an idea, but only the expression of the idea. See Baker v. Selden, 101 U.S. 99, 25 L.Ed. 841 (1879); Mazer v. Stein, 347 U.S. 201, 217, 74 S.Ct. 460, 470, 98 L.Ed. 630 (1954). This axiom of common law has been incorporated into the governing statute. Section 102(b) of the Act provides:

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). See also House Report, at 5670 ("Copyright does not preclude others from using ideas or information revealed by the author's work.").

Congress made no special exception for computer programs. To the contrary, the legislative history explicitly states that copyright protects computer programs only "to the extent that they incorporate authorship in programmer's expression of original ideas, as distinguished from the ideas themselves." Id. at 5667; see also id. at 5670 ("Section 102(b) is intended ... 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 copyright law.").

Similarly, the National Commission on New Technological Uses of Copyrighted Works ("CONTU") established by Congress to survey the issues generated by the interrelationship of advancing technology and copyright law, see Pub.L. No. 93-573, § 201, 88 Stat. 1873 (1974), recommended, inter alia, that the 1976 Copyright Act "be amended ... to make it explicit that computer programs, to the extent that they embody the author's original creation, are proper subject matter for copyright." See National Commission on New Technological Uses of Copyrighted Works, Final Report 1 (1979) (hereinafter "CONTU Report" ). To that end, Congress adopted CONTU's suggestions and amended the Copyright Act by adding, among other things, a provision to 17 U.S.C. § 101 which defined the term "computer program." See Pub.L. No. 96-517, § 10(a), 94 Stat. [704] 3028 (1980). CONTU also "concluded that the idea-expression distinction should be used to determine which aspects of computer programs are copyrightable." Lotus Dev. Corp., 740 F.Supp. at 54 (citing CONTU Report, at 44).

Drawing the line between idea and expression is a tricky business. Judge Learned Hand noted that "[n]obody has ever been able to fix that boundary, and nobody ever can." Nichols, 45 F.2d at 121. Thirty years later his convictions remained firm. "Obviously, no principle can be stated as to when an imitator has gone beyond copying the 'idea,' and has borrowed its 'expression,' " Judge Hand concluded. "Decisions must therefore inevitably be ad hoc." Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir.1960).

The essentially utilitarian nature of a computer program further complicates the task of distilling its idea from its expression. See SAS Inst., 605 F.Supp. at 829; cf. Englund, at 893. In order to describe both computational processes and abstract ideas, its content "combines creative and technical expression." See Spivack, at 755. The variations of expression found in purely creative compositions, as opposed to those contained in utilitarian works, are not directed towards practical application. For example, a narration of Humpty Dumpty's demise, which would clearly be a creative composition, does not serve the same ends as, say, a recipe for scrambled eggs--which is a more process oriented text. Thus, compared to aesthetic works, computer programs hover even more closely to the elusive boundary line described in § 102(b).

The doctrinal starting point in analyses of utilitarian works, is the seminal case of Baker v. Selden, 101 U.S. 99, 25 L.Ed. 841 (1879). In Baker, the Supreme Court faced the question of "whether the exclusive property in a system of bookkeeping can be claimed, under the law of copyright, by means of a book in which that system is explained?" Id. at 101. Selden had copyrighted a book that expounded a particular method of bookkeeping. The book contained lined pages with headings intended to illustrate the manner in which the system operated. Baker's accounting publication included ledger sheets that employed "substantially the same ruled lines and headings...." Id. Selden's testator sued Baker for copyright infringement on the theory that the ledger sheets were protected by Selden's copyright.

The Supreme Court found nothing copyrightable in Selden's bookkeeping system, and rejected his infringement claim regarding the ledger sheets. The Court held that:

The fact that the art described in the book by illustrations of lines and figures which are reproduced in practice in the application of the art, makes no difference. Those illustrations are the mere language employed by the author to convey his ideas more clearly. Had he used words of description instead of diagrams (which merely stand in the place of words), there could not be the slightest doubt that others, applying the art to practical use, might lawfully draw the lines and diagrams which were in the author's mind, and which he thus described by words in his book.

The copyright of a work on mathematical science cannot give to the author an exclusive right to the methods of operation which he propounds, or to the diagrams which he employs to explain them, so as to prevent an engineer from using them whenever occasion requires.

Id. at 103.

To the extent that an accounting text and a computer program are both "a set of statements or instructions ... to bring about a certain result," 17 U.S.C. § 101, they are roughly analogous. In the former case, the processes are ultimately conducted by human agency; in the latter, by electronic means. In either case, as already stated, the processes themselves are not protectable. But the holding in Baker goes farther. The Court concluded that those aspects of a work, which "must necessarily be used as incident to" the idea, system or process that the work describes, are also not copyrightable. 101 U.S. at 104. Selden's ledger sheets, therefore, enjoyed [705] no copyright protection because they were "necessary incidents to" the system of accounting that he described. Id. at 103. From this reasoning, we conclude that those elements of a computer program that are necessarily incidental to its function are similarly unprotectable.

While Baker v. Selden provides a sound analytical foundation, it offers scant guidance on how to separate idea or process from expression, and moreover, on how to further distinguish protectable expression from that expression which "must necessarily be used as incident to" the work's underlying concept. In the context of computer programs, the Third Circuit's noted decision in Whelan has, thus far, been the most thoughtful attempt to accomplish these ends.

The court in Whelan faced substantially the same problem as is presented by this case. There, the defendant was accused of making off with the non-literal structure of the plaintiff's copyrighted dental lab management program, and employing it to create its own competitive version. In assessing whether there had been an infringement, the court had to determine which aspects of the programs involved were ideas, and which were expression. In separating the two, the court settled upon the following conceptual approach:

[T]he line between idea and expression may be drawn with reference to the end sought to be achieved by the work in question. In other words, the purpose or function of a utilitarian work would be the work's idea, and everything that is not necessary to that purpose or function would be part of the expression of the idea.... Where there are various means of achieving the desired purpose, then the particular means chosen is not necessary to the purpose; hence, there is expression, not idea.

797 F.2d at 1236 (citations omitted). The "idea" of the program at issue in Whelan was identified by the court as simply "the efficient management of a dental laboratory." Id. at n. 28.

So far, in the courts, the Whelan rule has received a mixed reception. While some decisions have adopted its reasoning, see, e.g., Bull HN Info. Sys., Inc. v. American Express Bank, Ltd., 1990 Copyright Law Dec. (CCH) p 26,555 at 23,278, 1990 WL 48098 (S.D.N.Y.1990); Dynamic Solutions, Inc. v. Planning & Control, Inc., 1987 Copyright Law Dec. (CCH) p 26,062 at 20,912, 1987 WL 6419 (S.D.N.Y.1987); Broderbund Software Inc. v. Unison World, Inc., 648 F.Supp. 1127, 1133 (N.D.Cal.1986), others have rejected it, see Plains Cotton Co-op v. Goodpasture Computer Serv., Inc., 807 F.2d 1256, 1262 (5th Cir.), cert. denied, 484 U.S. 821, 108 S.Ct. 80, 98 L.Ed.2d 42 (1987); cf. Synercom Technology, Inc. v. University Computing Co., 462 F.Supp. 1003, 1014 (N.D.Tex.1978) (concluding that order and sequence of data on computer input formats was idea not expression).

Whelan has fared even more poorly in the academic community, where its standard for distinguishing idea from expression has been widely criticized for being conceptually overbroad. See, e.g., Englund, at 881; Menell, at 1074, 1082; Kretschmer, at 837-39; Spivack, at 747-55; Thomas M. Gage, Note, Whelan Associates v. Jaslow Dental Laboratories: Copyright Protection for Computer Software Structure--What's the Purpose?, 1987 WIS.L.REV. 859, 860-61 (1987). The leading commentator in the field has stated that "[t]he crucial flaw in [Whelan 's] reasoning is that it assumes that only one 'idea,' in copyright law terms, underlies any computer program, and that once a separable idea can be identified, everything else must be expression." 3 Nimmer § 13.03(F), at 13-62.34. This criticism focuses not upon the program's ultimate purpose but upon the reality of its structural design. As we have already noted, a computer program's ultimate function or purpose is the composite result of interacting subroutines. Since each subroutine is itself a program, and thus, may be said to have its own "idea," Whelan 's general formulation that a program's overall purpose equates with the program's idea is descriptively inadequate.

Accordingly, we think that Judge Pratt wisely declined to follow Whelan. See [706] Computer Assocs., 775 F.Supp. at 558-60. In addition to noting the weakness in the Whelan definition of "program-idea," mentioned above, Judge Pratt found that Whelan 's synonymous use of the terms "structure, sequence, and organization," see Whelan, 797 F.2d at 1224 n. 1, demonstrated a flawed understanding of a computer program's method of operation. See Computer Assocs., 775 F.Supp. at 559-60 (discussing the distinction between a program's "static structure" and "dynamic structure"). Rightly, the district court found Whelan 's rationale suspect because it is so closely tied to what can now be seen--with the passage of time--as the opinion's somewhat outdated appreciation of computer science.

2) Substantial Similarity Test for Computer Program Structure: Abstraction-Filtration-Comparison

We think that Whelan 's approach to separating idea from expression in computer programs relies too heavily on metaphysical distinctions and does not place enough emphasis on practical considerations. Cf. Apple Computer, 714 F.2d at 1253 (rejecting certain commercial constraints on programming as a helpful means of distinguishing idea from expression because they did "not enter into the somewhat metaphysical issue of whether particular ideas and expressions have merged"). As the cases that we shall discuss demonstrate, a satisfactory answer to this problem cannot be reached by resorting, a priori, to philosophical first principals.

As discussed herein, we think that district courts would be well-advised to undertake a three-step procedure, based on the abstractions test utilized by the district court, in order to determine whether the non-literal elements of two or more computer programs are substantially similar. This approach breaks no new ground; rather, it draws on such familiar copyright doctrines as merger, scenes a faire, and public domain. In taking this approach, however, we are cognizant that computer technology is a dynamic field which can quickly outpace judicial decisionmaking. Thus, in cases where the technology in question does not allow for a literal application of the procedure we outline below, our opinion should not be read to foreclose the district courts of our circuit from utilizing a modified version.

In ascertaining substantial similarity under this approach, a court would first break down the allegedly infringed program into its constituent structural parts. Then, by examining each of these parts for such things as incorporated ideas, expression that is necessarily incidental to those ideas, and elements that are taken from the public domain, a court would then be able to sift out all non-protectable material. Left with a kernel, or possible kernels, of creative expression after following this process of elimination, the court's last step would be to compare this material with the structure of an allegedly infringing program. The result of this comparison will determine whether the protectable elements of the programs at issue are substantially similar so as to warrant a finding of infringement. It will be helpful to elaborate a bit further.

Step One: Abstraction

As the district court appreciated, see Computer Assocs., 775 F.Supp. at 560, the theoretic framework for analyzing substantial similarity expounded by Learned Hand in the Nichols case is helpful in the present context. In Nichols, we enunciated what has now become known as the "abstractions" test for separating idea from expression:

Upon any work ... 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 [work] 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 [author] could prevent the use of his "ideas," to which, apart from their expression, his property is never extended.

Nichols, 45 F.2d at 121.

While the abstractions test was originally applied in relation to literary works such [707] as novels and plays, it is adaptable to computer programs. In contrast to the Whelan approach, the abstractions test "implicitly recognizes that any given work may consist of a mixture of numerous ideas and expressions." 3 Nimmer § 13.03[F], at 13-62.34-63.

As applied to computer programs, the abstractions test will comprise the first step in the examination for substantial similarity. Initially, in a manner that resembles reverse engineering on a theoretical plane, a court should dissect the allegedly copied program's structure and isolate each level of abstraction contained within it. This process begins with the code and ends with an articulation of the program's ultimate function. Along the way, it is necessary essentially to retrace and map each of the designer's steps--in the opposite order in which they were taken during the program's creation. See Background: Computer Program Design, supra.

As an anatomical guide to this procedure, the following description is helpful:

At the lowest level of abstraction, a computer program may be thought of in its entirety as a set of individual instructions organized into a hierarchy of modules. At a higher level of abstraction, the instructions in the lowest-level modules may be replaced conceptually by the functions of those modules. At progressively higher levels of abstraction, the functions of higher-level modules conceptually replace the implementations of those modules in terms of lower-level modules and instructions, until finally, one is left with nothing but the ultimate function of the program.... A program has structure at every level of abstraction at which it is viewed. At low levels of abstraction, a program's structure may be quite complex; at the highest level it is trivial.

Englund, at 897-98; cf. Spivack, at 774.

Step Two: Filtration

Once the program's abstraction levels have been discovered, the substantial similarity inquiry moves from the conceptual to the concrete. Professor Nimmer suggests, and we endorse, a "successive filtering method" for separating protectable expression from non-protectable material. See generally 3 Nimmer § 13.03[F]. This process entails examining the structural components at each level of abstraction to determine whether their particular inclusion at that level was "idea" or was dictated by considerations of efficiency, so as to be necessarily incidental to that idea; required by factors external to the program itself; or taken from the public domain and hence is nonprotectable expression. See also Kretschmer, at 844-45 (arguing that program features dictated by market externalities or efficiency concerns are unprotectable). The structure of any given program may reflect some, all, or none of these considerations. Each case requires its own fact specific investigation.

Strictly speaking, this filtration serves "the purpose of defining the scope of plaintiff's copyright." Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1475 (9th Cir.) (endorsing "analytic dissection" of computer programs in order to isolate protectable expression), cert. denied, --- U.S. ----, 113 S.Ct. 198, 121 L.Ed.2d 141 (1992). By applying well developed doctrines of copyright law, it may ultimately leave behind a "core of protectable material." 3 Nimmer § 13.03[F], at 13-72. Further explication of this second step may be helpful.

(a) Elements Dictated by Efficiency

The portion of Baker v. Selden, discussed earlier, which denies copyright protection to expression necessarily incidental to the idea being expressed, appears to be the cornerstone for what has developed into the doctrine of merger. See Morrissey v. Proctor & Gamble Co., 379 F.2d 675, 678-79 (1st Cir.1967) (relying on Baker for the proposition that expression embodying the rules of a sweepstakes contest was inseparable from the idea of the contest itself, and therefore were not protectable by copyright); see also Digital Communications, 659 F.Supp. at 457. The doctrine's underlying principle is that "[w]hen there is essentially only one way to express an idea, the idea and its expression are inseparable [708] and copyright is no bar to copying that expression." Concrete Machinery Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 606 (1st Cir.1988). Under these circumstances, the expression is said to have "merged" with the idea itself. In order not to confer a monopoly of the idea upon the copyright owner, such expression should not be protected. See Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir.1971).

CONTU recognized the applicability of the merger doctrine to computer programs. In its report to Congress it stated that:

[C]opyrighted language may be copied without infringing when there is but a limited number of ways to express a given idea.... In the computer context, this means that when specific instructions, even though previously copyrighted, are the only and essential means of accomplishing a given task, their later use by another will not amount to infringement.

CONTU Report, at 20. While this statement directly concerns only the application of merger to program code, that is, the textual aspect of the program, it reasonably suggests that the doctrine fits comfortably within the general context of computer programs.

Furthermore, when one considers the fact that programmers generally strive to create programs "that meet the user's needs in the most efficient manner," Menell, at 1052, the applicability of the merger doctrine to computer programs becomes compelling. In the context of computer program design, the concept of efficiency is akin to deriving the most concise logical proof or formulating the most succinct mathematical computation. Thus, the more efficient a set of modules are, the more closely they approximate the idea or process embodied in that particular aspect of the program's structure.

While, hypothetically, there might be a myriad of ways in which a programmer may effectuate certain functions within a program,--i.e., express the idea embodied in a given subroutine--efficiency concerns may so narrow the practical range of choice as to make only one or two forms of expression workable options. See 3 Nimmer § 13.03[F], at 13-63; see also Whelan, 797 F.2d at 1243 n. 43 ("It is true that for certain tasks there are only a very limited number of file structures available, and in such cases the structures might not be copyrightable...."). Of course, not all program structure is informed by efficiency concerns. See Menell, at 1052 (besides efficiency, simplicity related to user accommodation has become a programming priority). It follows that in order to determine whether the merger doctrine precludes copyright protection to an aspect of a program's structure that is so oriented, a court must inquire "whether the use of this particular set of modules is necessary efficiently to implement that part of the program's process" being implemented. Englund, at 902. If the answer is yes, then the expression represented by the programmer's choice of a specific module or group of modules has merged with their underlying idea and is unprotected. Id. at 902-03.

Another justification for linking structural economy with the application of the merger doctrine stems from a program's essentially utilitarian nature and the competitive forces that exist in the software marketplace. See Kretschmer, at 842. Working in tandem, these factors give rise to a problem of proof which merger helps to eliminate.

Efficiency is an industry-wide goal. Since, as we have already noted, there may be only a limited number of efficient implementations for any given program task, it is quite possible that multiple programmers, working independently, will design the identical method employed in the allegedly infringed work. Of course, if this is the case, there is no copyright infringement. See Roth Greeting Cards v. United Card Co., 429 F.2d 1106, 1110 (9th Cir.1970); Sheldon, 81 F.2d at 54.

Under these circumstances, the fact that two programs contain the same efficient structure may as likely lead to an inference of independent creation as it does to one of copying. See 3 Nimmer § 13.03[F], at 13-65; cf. Herbert Rosenthal [709] Jewelry Corp., 446 F.2d at 741 (evidence of independent creation may stem from defendant's standing as a designer of previous similar works). Thus, since evidence of similarly efficient structure is not particularly probative of copying, it should be disregarded in the overall substantial similarity analysis. See 3 Nimmer § 13.03[F], at 13-65.

We find support for applying the merger doctrine in cases that have already addressed the question of substantial similarity in the context of computer program structure. Most recently, in Lotus Dev. Corp., 740 F.Supp. at 66, the district court had before it a claim of copyright infringement relating to the structure of a computer spreadsheet program. The court observed that "the basic spreadsheet screen display that resembles a rotated 'L' ..., if not present in every expression of such a program, is present in most expressions." Id. Similarly, the court found that "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." Id. Applying the merger doctrine, the court denied copyright protection to both program elements.

In Manufacturers Technologies, Inc. v. Cams, Inc., 706 F.Supp. 984, 995-99 (D.Conn.1989), the infringement claims stemmed from various alleged program similarities "as indicated in their screen displays." Id. at 990. Stressing efficiency concerns in the context of a merger analysis, the court determined that the program's method of allowing the user to navigate within the screen displays was not protectable because, in part, "the process or manner of navigating internally on any specific screen displays ... is limited in the number of ways it may be simply achieved to facilitate user comfort." Id. at 995.

The court also found that expression contained in various screen displays (in the form of alphabetical and numerical columns) was not the proper subject of copyright protection because it was "necessarily incident to the idea[s]" embodied in the displays. Id. at 996-97. Cf. Digital Communications, 659 F.Supp. at 460 (finding no merger and affording copyright protection to program's status screen display because "modes of expression chosen ... are clearly not necessary to the idea of the status screen").

We agree with the approach taken in these decisions, and conclude that application of the merger doctrine in this setting is an effective way to eliminate non-protectable expression contained in computer programs.

(b) Elements Dictated By External Factors

We have stated that where "it is virtually impossible to write about a particular historical era or fictional theme without employing certain 'stock' or standard literary devices," such expression is not copyrightable. Hoehling v. Universal City Studios, Inc., 618 F.2d 972, 979 (2d Cir.), cert. denied, 449 U.S. 841, 101 S.Ct. 121, 66 L.Ed.2d 49 (1980). For example, the Hoehling case was an infringement suit stemming from several works on the Hindenberg disaster. There we concluded that similarities in representations of German beer halls, scenes depicting German greetings such as "Heil Hitler," or the singing of certain German songs would not lead to a finding of infringement because they were " 'indispensable, or at least standard, in the treatment of' " life in Nazi Germany. Id. (quoting Alexander v. Haley, 460 F.Supp. 40, 45 (S.D.N.Y.1978)). This is known as the scenes a faire doctrine, and like "merger," it has its analogous application to computer programs. Cf. Data East USA, 862 F.2d at 208 (applying scenes a faire to a home computer video game).

Professor Nimmer points out that "in many instances it is virtually impossible to write a program to perform particular functions in a specific computing environment without employing standard techniques." 3 Nimmer § 13.03[F], at 13-65. This is a result of the fact that a programmer's freedom of design choice is often circumscribed by extrinsic considerations such as (1) the mechanical specifications of the computer on which a particular program [710] is intended to run; (2) compatibility requirements of other programs with which a program is designed to operate in conjunction; (3) computer manufacturers' design standards; (4) demands of the industry being serviced; and (5) widely accepted programming practices within the computer industry. Id. at 13-66-71.

Courts have already considered some of these factors in denying copyright protection to various elements of computer programs. In the Plains Cotton case, the Fifth Circuit refused to reverse the district court's denial of a preliminary injunction against an alleged program infringer because, in part, "many of the similarities between the ... programs [were] dictated by the externalities of the cotton market." 807 F.2d at 1262.

In Manufacturers Technologies, the district court noted that the program's method of screen navigation "is influenced by the type of hardware that the software is designed to be used on." 706 F.Supp. at 995. Because, in part, "the functioning of the hardware package impact[ed] and constrain[ed] the type of navigational tools used in plaintiff's screen displays," the court denied copyright protection to that aspect of the program. Id.; cf. Data East USA, 862 F.2d at 209 (reversing a district court's finding of audiovisual work infringement because, inter alia, "the use of the Commodore computer for a karate game intended for home consumption is subject to various constraints inherent in the use of that computer").

Finally, the district court in Q-Co Industries rested its holding on what, perhaps, most closely approximates a traditional scenes a faire rationale. There, the court denied copyright protection to four program modules employed in a teleprompter program. This decision was ultimately based upon the court's finding that "the same modules would be an inherent part of any prompting program." 625 F.Supp. at 616.

Building upon this existing case law, we conclude that a court must also examine the structural content of an allegedly infringed program for elements that might have been dictated by external factors.

(c) Elements taken From the Public Domain

Closely related to the non-protectability of scenes a faire, is material found in the public domain. Such material is free for the taking and cannot be appropriated by a single author even though it is included in a copyrighted work. See E.F. Johnson Co. v. Uniden Corp. of America, 623 F.Supp. 1485, 1499 (D.Minn.1985); see also Sheldon, 81 F.2d at 54. We see no reason to make an exception to this rule for elements of a computer program that have entered the public domain by virtue of freely accessible program exchanges and the like. See 3 Nimmer § 13.03[F]; see also Brown Bag Software, 960 F.2d at 1473 (affirming the district court's finding that " '[p]laintiffs may not claim copyright protection of an ... expression that is, if not standard, then commonplace in the computer software industry.' "). Thus, a court must also filter out this material from the allegedly infringed program before it makes the final inquiry in its substantial similarity analysis.

Step Three: Comparison

The third and final step of the test for substantial similarity that we believe appropriate for non-literal program components entails a comparison. Once a court has sifted out all elements of the allegedly infringed program which are "ideas" or are dictated by efficiency or external factors, or taken from the public domain, there may remain a core of protectable expression. In terms of a work's copyright value, this is the golden nugget. See Brown Bag Software, 960 F.2d at 1475. At this point, the court's substantial similarity inquiry focuses on whether the defendant copied any aspect of this protected expression, as well as an assessment of the copied portion's relative importance with respect to the plaintiff's overall program. See 3 Nimmer § 13.03[F]; Data East USA, 862 F.2d at 208 ("To determine whether similarities result from unprotectable expression, analytic dissection of similarities may be [711] performed. If ... all similarities in expression arise from use of common ideas, then no substantial similarity can be found.").

3) Policy Considerations

We are satisfied that the three step approach we have just outlined not only comports with, but advances the constitutional policies underlying the Copyright Act. Since any method that tries to distinguish idea from expression ultimately impacts on the scope of copyright protection afforded to a particular type of work, "the line [it draws] must be a pragmatic one, which also keeps in consideration 'the preservation of the balance between competition and protection....' " Apple Computer, 714 F.2d at 1253 (citation omitted).

CA and some amici argue against the type of approach that we have set forth on the grounds that it will be a disincentive for future computer program research and development. At bottom, they claim that if programmers are not guaranteed broad copyright protection for their work, they will not invest the extensive time, energy and funds required to design and improve program structures. While they have a point, their argument cannot carry the day. The interest of the copyright law is not in simply conferring a monopoly on industrious persons, but in advancing the public welfare through rewarding artistic creativity, in a manner that permits the free use and development of non-protectable ideas and processes.

In this respect, our conclusion is informed by Justice Stewart's concise discussion of the principles that correctly govern the adaptation of the copyright law to new circumstances. In Twentieth Century Music Corp. v. Aiken, he wrote:

The limited scope of the copyright holder's statutory monopoly, like the limited copyright duration required by the Constitution, reflects a balance of competing claims upon the public interest: Creative work is to be encouraged and rewarded, but private motivation must ultimately serve the cause of promoting broad public availability of literature, music, and the other arts.

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.... When technological change has rendered its literal terms ambiguous, the Copyright Act must be construed in light of this basic purpose.

422 U.S. 151, 156, 95 S.Ct. 2040, 2043-44, 45 L.Ed.2d 84 (1975) (citations and footnotes omitted).

Recently, the Supreme Court has emphatically reiterated that "[t]he primary objective of copyright is not to reward the labor of authors...." Feist Publications, Inc. v. Rural Tel. Serv. Co., --- U.S. ----, ----, 111 S.Ct. 1282, 1290, 113 L.Ed.2d 358 (1991) (emphasis added). While the Feist decision deals primarily with the copyrightability of purely factual compilations, its underlying tenets apply to much of the work involved in computer programming. Feist put to rest the "sweat of the brow" doctrine in copyright law. Id. at ----, 111 S.Ct. at 1295. The rationale of that doctrine "was that copyright was a reward for the hard work that went into compiling facts." Id. at ----, 111 S.Ct. at 1291. The Court flatly rejected this justification for extending copyright protection, noting that it "eschewed the most fundamental axiom of copyright law--that no one may copyright facts or ideas." Id.

Feist teaches that substantial effort alone cannot confer copyright status on an otherwise uncopyrightable work. As we have discussed, despite the fact that significant labor and expense often goes into computer program flow-charting and debugging, that process does not always result in inherently protectable expression. Thus, Feist implicitly undercuts the Whelan rationale, "which allow[ed] copyright protection beyond the literal computer code ... [in order to] provide the proper incentive for programmers by protecting their most valuable efforts...." Whelan, 797 F.2d at 1237 (footnote omitted). We note that Whelan was decided prior to Feist when the "sweat of the brow" doctrine still had vitality. In view of the Supreme [712] Court's recent holding, however, we must reject the legal basis of CA's disincentive argument.

Furthermore, we are unpersuaded that the test we approve today will lead to the dire consequences for the computer program industry that plaintiff and some amici predict. To the contrary, serious students of the industry have been highly critical of the sweeping scope of copyright protection engendered by the Whelan rule, in that it "enables first comers to 'lock up' basic programming techniques as implemented in programs to perform particular tasks." Menell, at 1087; see also Spivack, at 765 (Whelan "results in an inhibition of creation by virtue of the copyright owner's quasi-monopoly power").

To be frank, the exact contours of copyright protection for non-literal program structure are not completely clear. We trust that as future cases are decided, those limits will become better defined. Indeed, it may well be that the Copyright Act serves as a relatively weak barrier against public access to the theoretical interstices behind a program's source and object codes. This results from the hybrid nature of a computer program, which, while it is literary expression, is also a highly functional, utilitarian component in the larger process of computing.

Generally, we think that copyright registration--with its indiscriminating availability--is not ideally suited to deal with the highly dynamic technology of computer science. Thus far, many of the decisions in this area reflect the courts' attempt to fit the proverbial square peg in a round hole. The district court, see Computer Assocs., 775 F.Supp. at 560, and at least one commentator have suggested that patent registration, with its exacting up-front novelty and non-obviousness requirements, might be the more appropriate rubric of protection for intellectual property of this kind. See Randell M. Whitmeyer, Comment, A Plea for Due Processes: Defining the Proper Scope of Patent Protection for Computer Software, 85 Nw.U.L.REV. 1103, 1123-25 (1991); see also Lotus Dev. Corp. v. Borland Int'l, Inc., 788 F.Supp. 78, 91 (D.Mass.1992) (discussing the potentially supplemental relationship between patent and copyright protection in the context of computer programs). In any event, now that more than 12 years have passed since CONTU issued its final report, the resolution of this specific issue could benefit from further legislative investigation--perhaps a CONTU II.

In the meantime, Congress has made clear that computer programs are literary works entitled to copyright protection. Of course, we shall abide by these instructions, but in so doing we must not impair the overall integrity of copyright law. While incentive based arguments in favor of broad copyright protection are perhaps attractive from a pure policy perspective, see Lotus Dev. Corp., 740 F.Supp. at 58, ultimately, they have a corrosive effect on certain fundamental tenets of copyright doctrine. If the test we have outlined results in narrowing the scope of protection, as we expect it will, that result flows from applying, in accordance with Congressional intent, long-standing principles of copyright law to computer programs. Of course, our decision is also informed by our concern that these fundamental principles remain undistorted.

B. The District Court Decision

We turn now to our review of the district court's decision in this particular case. At the outset, we must address CA's claim that the district court erred by relying too heavily on the court appointed expert's "personal opinions on the factual and legal issues before the court."

1) Use of Expert Evidence in Determining Substantial Similarity Between Computer Programs

Pursuant to Fed.R.Evid. 706, and with the consent of both Altai and CA, Judge Pratt appointed and relied upon Dr. Randall Davis of the Massachusetts Institute of Technology as the court's own expert witness on the issue of substantial similarity. Dr. Davis submitted a comprehensive written report that analyzed the various aspects of the computer programs [713] at issue and evaluated the parties' expert evidence. At trial, Dr. Davis was extensively cross-examined by both CA and Altai.

The well-established general rule in this circuit has been to limit the use of expert opinion in determining whether works at issue are substantially similar. As a threshold matter, expert testimony may be used to assist the fact finder in ascertaining whether the defendant had copied any part of the plaintiff's work. See Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir.1946). To this end, "the two works are to be compared in their entirety ... [and] in making such comparison resort may properly be made to expert analysis...." 3 Nimmer § 13.03[E], at 13-62.16.

However, once some amount of copying has been established, it remains solely for the trier of fact to determine whether the copying was "illicit," that is to say, whether the "defendant took from plaintiff's works so much of what is pleasing to [lay observers] who comprise the audience for whom such [works are] composed, that defendant wrongfully appropriated something which belongs to the plaintiff." Arnstein, 154 F.2d at 473. Since the test for illicit copying is based upon the response of ordinary lay observers, expert testimony is thus "irrelevant" and not permitted. Id. at 468, 473. We have subsequently described this method of inquiry as "merely an alternative way of formulating the issue of substantial similarity." Ideal Toy Corp. v. Fab-Lu Ltd. (Inc.), 360 F.2d 1021, 1023 n. 2 (2d Cir.1966).

Historically, Arnstein 's ordinary observer standard had its roots in "an attempt to apply the 'reasonable person' doctrine as found in other areas of the law to copyright." 3 Nimmer § 13.03[E], at 13-62.10-11. That approach may well have served its purpose when the material under scrutiny was limited to art forms readily comprehensible and generally familiar to the average lay person. However, in considering the extension of the rule to the present case, we are reminded of Holmes' admonition that, "[t]he life of the law has not been logic: it has been experience." O.W. Holmes, Jr., THE COMMON LAW 1 (1881).

Thus, in deciding the limits to which expert opinion may be employed in ascertaining the substantial similarity of computer programs, we cannot disregard the highly complicated and technical subject matter at the heart of these claims. Rather, we recognize the reality that computer programs are likely to be somewhat impenetrable by lay observers--whether they be judges or juries--and, thus, seem to fall outside the category of works contemplated by those who engineered the Arnstein test. Cf. Dawson v. Hinshaw Music Inc., 905 F.2d 731, 737 (4th Cir.) ("departure from the lay characterization is warranted only where the intended audience possesses 'specialized expertise' "), cert. denied, 498 U.S. 981, 111 S.Ct. 511, 112 L.Ed.2d 523 (1990). As Judge Pratt correctly observed:

In the context of computer programs, many of the familiar tests of similarity prove to be inadequate, for they were developed historically in the context of artistic and literary, rather than utilitarian, works.

Computer Assocs., 775 F.Supp. at 558.

In making its finding on substantial similarity with respect to computer programs, we believe that the trier of fact need not be limited by the strictures of its own lay perspective. See Dawson, 905 F.2d at 735; Whelan, 797 F.2d at 1233; Broderbund, 648 F.Supp. at 1136 (stating in dictum: "an integrated test involving expert testimony and analytic dissection may well be the wave of the future in this area...."); Brown Bag Software, 960 F.2d at 1478-79 (Sneed, J., concurring); see also 3 Nimmer § 13.03[E]; but see Brown Bag Software, 960 F.2d at 1475 (applying the "ordinary reasonable person" standard in substantial similarity test for computer programs). Rather, we leave it to the discretion of the district court to decide to what extent, if any, expert opinion, regarding the highly technical nature of computer programs, is warranted in a given case.

In so holding, we do not intend to disturb the traditional role of lay observers in judging [714] substantial similarity in copyright cases that involve the aesthetic arts, such as music, visual works or literature.

In this case, Dr. Davis' opinion was instrumental in dismantling the intricacies of computer science so that the court could formulate and apply an appropriate rule of law. While Dr. Davis' report and testimony undoubtedly shed valuable light on the subject matter of the litigation, Judge Pratt remained, in the final analysis, the trier of fact. The district court's use of the expert's assistance, in the context of this case, was entirely appropriate.

2) Evidentiary Analysis

The district court had to determine whether Altai's OSCAR 3.5 program was substantially similar to CA's ADAPTER. We note that Judge Pratt's method of analysis effectively served as a road map for our own, with one exception--Judge Pratt filtered out the non-copyrightable aspects of OSCAR 3.5 rather than those found in ADAPTER, the allegedly infringed program. We think that our approach--i.e., filtering out the unprotected aspects of an allegedly infringed program and then comparing the end product to the structure of the suspect program--is preferable, and therefore believe that district courts should proceed in this manner in future cases.

We opt for this strategy because, in some cases, the defendant's program structure might contain protectable expression and/or other elements that are not found in the plaintiff's program. Since it is extraneous to the allegedly copied work, this material would have no bearing on any potential substantial similarity between the two programs. Thus, its filtration would be wasteful and unnecessarily time consuming. Furthermore, by focusing the analysis on the infringing rather than on the infringed material, a court may mistakenly place too little emphasis on a quantitatively small misappropriation which is, in reality, a qualitatively vital aspect of the plaintiff's protectable expression.

The fact that the district court's analysis proceeded in the reverse order, however, had no material impact on the outcome of this case. Since Judge Pratt determined that OSCAR effectively contained no protectable expression whatsoever, the most serious charge that can be levelled against him is that he was overly thorough in his examination.

The district court took the first step in the analysis set forth in this opinion when it separated the program by levels of abstraction. The district court stated:

As applied to computer software programs, this abstractions test would progress in order of "increasing generality" from object code, to source code, to parameter lists, to services required, to general outline. In discussing the particular similarities, therefore, we shall focus on these levels.

Computer Assocs., 775 F.Supp. at 560. While the facts of a different case might require that a district court draw a more particularized blueprint of a program's overall structure, this description is a workable one for the case at hand.

Moving to the district court's evaluation of OSCAR 3.5's structural components, we agree with Judge Pratt's systematic exclusion of non-protectable expression. With respect to code, the district court observed that after the rewrite of OSCAR 3.4 to OSCAR 3.5, "there remained virtually no lines of code that were identical to ADAPTER." Id. at 561. Accordingly, the court found that the code "present[ed] no similarity at all." Id. at 562.

Next, Judge Pratt addressed the issue of similarity between the two programs' parameter lists and macros. He concluded that, viewing the conflicting evidence most favorably to CA, it demonstrated that "only a few of the lists and macros were similar to protected elements in ADAPTER; the others were either in the public domain or dictated by the functional demands of the program." Id. As discussed above, functional elements and elements taken from the public domain do not qualify for copyright protection. With respect to the few remaining parameter lists and macros, the district court could reasonably conclude that they did not warrant a [715] finding of infringement given their relative contribution to the overall program. See Warner Bros., Inc. v. American Broadcasting Cos., Inc., 720 F.2d 231, 242 (2d Cir.1983) (discussing de minimis exception which allows for literal copying of a small and usually insignificant portion of the plaintiff's work); 3 Nimmer § 13.03[F], at 13-74. In any event, the district court reasonably found that, for lack of persuasive evidence, CA failed to meet its burden of proof on whether the macros and parameter lists at issue were substantially similar. See Computer Assocs., 775 F.Supp. at 562.

The district court also found that the overlap exhibited between the list of services required for both ADAPTER and OSCAR 3.5 was "determined by the demands of the operating system and of the applications program to which it [was] to be linked through ADAPTER or OSCAR...." Id. In other words, this aspect of the program's structure was dictated by the nature of other programs with which it was designed to interact and, thus, is not protected by copyright.

Finally, in his infringement analysis, Judge Pratt accorded no weight to the similarities between the two programs' organizational charts, "because [the charts were] so simple and obvious to anyone exposed to the operation of the program[s]." Id. CA argues that the district court's action in this regard "is not consistent with copyright law"--that "obvious" expression is protected, and that the district court erroneously failed to realize this. However, to say that elements of a work are "obvious," in the manner in which the district court used the word, is to say that they "follow naturally from the work's theme rather than from the author's creativity." 3 Nimmer § 13.03[F], at 13-65. This is but one formulation of the scenes a faire doctrine, which we have already endorsed as a means of weeding out unprotectable expression.

CA argues, at some length, that many of the district court's factual conclusions regarding the creative nature of its program's components are simply wrong. Of course, we are limited in our review of factual findings to setting aside only those that we determine are clearly erroneous. See Fed.R.Civ.P. 52. Upon a thorough review of the voluminous record in this case, which is comprised of conflicting testimony and other highly technical evidence, we discern no error on the part of Judge Pratt, let alone clear error.

Since we accept Judge Pratt's factual conclusions and the results of his legal analysis, we affirm his denial of CA's copyright infringement claim based upon OSCAR 3.5. We emphasize that, like all copyright infringement cases, those that involve computer programs are highly fact specific. The amount of protection due structural elements, in any given case, will vary according to the protectable expression found to exist within the program at issue.

II. TRADE SECRET PREEMPTION

In its complaint, CA alleged that Altai misappropriated the trade secrets contained in the ADAPTER program. Prior to trial, while the proceedings were still before Judge Mishler, Altai moved to dismiss and for summary judgment on CA's trade secret misappropriation claim. Altai argued that section 301 of the Copyright Act preempted CA's state law cause of action. Judge Mishler denied Altai's motion, reasoning that " '[t]he elements of the tort of appropriation of trade secrets through the breach of contract or confidence by an employee are not the same as the elements of a claim of copyright infringement.' " Computer Assocs., 775 F.Supp. at 563.

The parties addressed the preemption issue again, both in pre- and post-trial briefs. Judge Pratt then reconsidered and reversed Judge Mishler's earlier ruling. The district court concluded that CA's trade secret claims were preempted because "CA--which is the master of its own case--has pleaded and proven facts which establish that one act constituted both copyright infringement and misappropriation of trade secrets [namely, the] copying [716] of ADAPTER into OSCAR 3.4...." Id. at 565.

In our original opinion, Computer Assocs. Int'l, Inc. v. Altai, Inc., Nos. 91-7893, 91-7935, slip op. 4715, 4762-69, 1992 WL 139364 (2d Cir. June 22, 1992), we affirmed Judge Pratt's decision. CA petitioned for rehearing on this issue. In its petition for rehearing, CA brought to our attention portions of the record below that were not included in the appendix on appeal. CA argued that these documents, along with Judge Mishler's disposition of Altai's motion to dismiss and for summary judgment, established that CA advanced non-preempted trade secret misappropriation claims before both Judge Mishler and Judge Pratt. CA further contended that Judge Pratt failed to consider its theory that Altai was liable for wrongful acquisition of CA's trade secrets through Arney. Upon reconsideration, we have granted the petition for rehearing, withdrawn our initial opinion, and conclude in this amended opinion that the district court's preemption ruling on CA's trade secret claims should be vacated. We accordingly vacate the judgment of the district court on this point and remand CA's trade secret claims for a determination on the merits.

A. General Law of Copyright Preemption Regarding Trade Secrets and Computer Programs

Congress carefully designed the statutory framework of federal copyright preemption. In order to insure that the enforcement of these rights remains solely within the federal domain, section 301(a) of the Copyright Act expressly preempts

all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103....

17 U.S.C. § 301(a). This sweeping displacement of state law is, however, limited by section 301(b), which provides, in relevant part, that

[n]othing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to ... activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106....

17 U.S.C. § 301(b)(3). Section 106, in turn, affords a copyright owner the exclusive right to: (1) reproduce the copyrighted work; (2) prepare derivative works; (3) distribute copies of the work by sale or otherwise; and, with respect to certain artistic works, (4) perform the work publicly; and (5) display the work publicly. See 17 U.S.C. § 106(1)-(5).

Section 301 thus preempts only those state law rights that "may be abridged by an act which, in and of itself, would infringe one of the exclusive rights" provided by federal copyright law. See Harper & Row, Publishers, Inc. v. Nation Enters., 723 F.2d 195, 200 (2d Cir.1983), rev'd on other grounds, 471 U.S. 539, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985). But if an "extra element" is "required instead of or in addition to the acts of reproduction, performance, distribution or display, in order to constitute a state-created cause of action, then the right does not lie 'within the general scope of copyright,' and there is no preemption." 1 Nimmer § 1.01[B], at 1-14-15; see also Harper & Row, Publishers, Inc., 723 F.2d at 200 (where state law right "is predicated upon an act incorporating elements beyond mere reproduction or the like, the [federal and state] rights are not equivalent" and there is no preemption).

A state law claim is not preempted if the "extra element" changes the "nature of the action so that it is qualitatively different from a copyright infringement claim." Mayer v. Josiah Wedgwood & Sons, Ltd., 601 F.Supp. 1523, 1535 (S.D.N.Y.1985); see Harper & Row, Publishers, Inc., 723 F.2d at 201. To determine whether a claim meets this standard, we must determine "what plaintiff seeks to protect, the theories in which the matter is thought to be protected and the rights sought to be enforced." 1 Roger M. Milgrim, Milgrim on Trade Secrets [717] § 2.06A, at 2-150 (1992) (hereinafter "Milgrim"). An action will not be saved from preemption by elements such as awareness or intent, which alter "the action's scope but not its nature...." Mayer, 601 F.Supp. at 1535.

Following this "extra element" test, we have held that unfair competition and misappropriation claims grounded solely in the copying of a plaintiff's protected expression are preempted by section 301. See, e.g., Walker v. Time Life Films, Inc., 784 F.2d 44, 53 (2d Cir.), cert. denied, 476 U.S. 1159, 106 S.Ct. 2278, 90 L.Ed.2d 721 (1986); Warner Bros., Inc. v. American Broadcasting Cos., 720 F.2d 231, 247 (2d Cir.1983); Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 919 & n. 15 (2d Cir.1980). We also have held to be preempted a tortious interference with contract claim grounded in the impairment of a plaintiff's right under the Copyright Act to publish derivative works. See Harper & Row, Publishers, Inc., 723 F.2d at 201.

However, many state law rights that can arise in connection with instances of copyright infringement satisfy the extra element test, and thus are not preempted by section 301. These include unfair competition claims based upon breaches of confidential relationships, breaches of fiduciary duties and trade secrets. Balboa Ins. Co. v. Trans Global Equities, 218 Cal.App.3d 1327, 1339-53, 267 Cal.Rptr. 787, 793-803 (Ct.App. 3rd Dist.), cert. denied, --- U.S. ----, 111 S.Ct. 347, 112 L.Ed.2d 311 (1990).

Trade secret protection, the branch of unfair competition law at issue in this case, remains a "uniquely valuable" weapon in the defensive arsenal of computer programmers. See 1 Milgrim § 2.06A[c], at 2-172.4. Precisely because trade secret doctrine protects the discovery of ideas, processes, and systems which are explicitly precluded from coverage under copyright law, courts and commentators alike consider it a necessary and integral part of the intellectual property protection extended to computer programs. See id.; see also Integrated Cash Management Servs., Inc. v. Digital Transactions, Inc., 920 F.2d 171, 173 (2d Cir.1990) (while plaintiff withdrew copyright infringement claim for misappropriation of computer program, relief for theft of trade secret sustained); Healthcare Affiliated Servs., Inc. v. Lippany, 701 F.Supp. 1142, 1152-55 (W.D.Pa.1988) (finding likelihood of success on trade secret claim, but not copyright claim); Q-Co Indus., Inc., 625 F.Supp. at 616-18 (finding likelihood of success on trade secret claim, but no merit to copyright claim); Kretschmer, at 847-49.

The legislative history of section 301 states that "[t]he evolving common law rights of ... trade secrets ... would remain unaffected as long as the causes of action contain elements, such as ... a breach of trust or confidentiality, that are different in kind from copyright infringement." House Report, at 5748. Congress did not consider the term "misappropriation" to be "necessarily synonymous with copyright infringement," or to serve as the talisman of preemption. Id.

Trade secret claims often are grounded upon a defendant's breach of a duty of trust or confidence to the plaintiff through improper disclosure of confidential material. See, e.g., Mercer v. C.A. Roberts Co., 570 F.2d 1232, 1238 (5th Cir.1978); Brignoli v. Balch Hardy and Scheinman, Inc., 645 F.Supp. 1201, 1205 (S.D.N.Y.1986). The defendant's breach of duty is the gravamen of such trade secret claims, and supplies the "extra element" that qualitatively distinguishes such trade secret causes of action from claims for copyright infringement that are based solely upon copying. See, e.g., Warrington Assoc., Inc. v. Real-Time Eng'g Sys., Inc., 522 F.Supp. 367, 369 (N.D.Ill.1981); Brignoli, 645 F.Supp. at 1205; see also generally Balboa Ins. Co., 218 Cal.App.3d at 1346-50, 267 Cal.Rptr. at 798-802 (reviewing cases).

B. Preemption in this Case

The district court stated that:

Were CA's [trade secret] allegations premised on a theory of illegal acquisition of a trade secret, a charge that might have been alleged against Arney, who is not a defendant in this case, the [718] preemption analysis might be different, for there seems to be no corresponding right guaranteed to copyright owners by § 106 of the copyright act.

Computer Assocs., 775 F.Supp. at 565.

However, the court concluded that CA's trade secret claims were not grounded in a theory that Altai violated a duty of confidentiality to CA. Rather, Judge Pratt stated that CA proceeded against Altai solely "on a theory that the misappropriation took place by Altai's use of ADAPTER--the same theory as the copyright infringement count." Id. The district court reasoned that "the right to be free from trade secret misappropriation through 'use', and the right to exclusive reproduction and distribution of a copyrighted work are not distinguishable." Id. Because he concluded that there was no qualitative difference between the elements of CA's state law trade secret claims and a claim for federal copyright infringement, Judge Pratt ruled that CA's trade secret claims were preempted by section 301.

We agree with CA that the district court failed to address fully the factual and theoretical bases of CA's trade secret claims. The district court relied upon the fact that Arney--not Altai--allegedly breached a duty to CA of confidentiality by stealing secrets from CA and incorporating those secrets into OSCAR 3.4. However, under a wrongful acquisition theory based on Restatement (First) of Torts § 757 (1939), Williams and Altai may be liable for violating CA's right of confidentiality. Section 757 states in relevant part:

One who discloses or uses another's trade secret, without a privilege to do so, is liable to another if.... (c) he learned the secret from a third person with notice of the fact that it was a secret and that the third person discovered it by improper means or that the third person's disclosure of it was otherwise a breach of his duty to the other....

Actual notice is not required for such a third party acquisition claim; constructive notice is sufficient. A defendant is on constructive notice when, "from the information which he has, a reasonable man would infer [a breach of confidence], or if, under the circumstances, a reasonable man would be put on inquiry and an inquiry pursued with reasonable intelligence and diligence would disclose the [breach]." Id., comment 1; Metallurgical Indus., Inc. v. Fourtek, Inc., 790 F.2d 1195, 1204 (5th Cir.1986); Vantage Point, Inc. v. Parker Bros., Inc., 529 F.Supp. 1204, 1210 n. 2 (E.D.N.Y.1981), aff'd, 697 F.2d 301 (2d Cir.1982); see also Rohm and Haas Co. v. Adco Chem. Co., 689 F.2d 424, 431 (3rd Cir.1982) ("Defendants never asked where the 'Harvey process' had come from. Defendants therefore were charged 'with whatever knowledge such inquiry would have led to.' ") (citation omitted); Colgate-Palmolive Co. v. Carter Prods., Inc., 230 F.2d 855, 864 (4th Cir.) (per curiam) (defendant " 'must have known by the exercise of fair business principles' " that its employee's work was covered by an agreement not to disclose) (citation omitted), cert. denied, 352 U.S. 843, 77 S.Ct. 43, 1 L.Ed.2d 59 (1956); 1 Milgrim § 5.04[c].

We agree with the district court that New Jersey's governing governmental interest choice of law analysis directs the application of Texas law to CA's trade secret misappropriation claim. See Computer Assocs., 775 F.Supp. at 566. Texas law recognizes trade secret misappropriation claims grounded in the reasoning of Restatement section 757(c), see, e.g., Fourtek, 790 F.2d at 1204, and the facts alleged by CA may well support such a claim.

It is undisputed that, when Arney stole the ADAPTER code and incorporated it into his design of OSCAR 3.4, he breached his confidentiality agreement with CA. The district court noted that while such action might constitute a valid claim against Arney, CA is the named defendant in this lawsuit. Additionally, the district court found, as a matter of fact, that "[n]o one at Altai, other than Arney, knew that Arney had the ADAPTER code...." Computer Assocs., 775 F.Supp. at 554. However, the district court did not consider fully Altai's potential liability for improper trade secret acquisition. It did not consider the question of Altai's trade secret liability [719] in connection with OSCAR 3.4 under a constructive notice theory, or Altai's potential liability under an actual notice theory in connection with OSCAR 3.5.

The district court found that, prior to CA's bringing suit, Altai was not on actual notice of Arney's theft of trade secrets, and incorporation of those secrets into OSCAR 3.4. However, by virtue of Williams' close relationship with Arney, Williams' general familiarity with CA's programs (having once been employed by CA himself), and the fact that Arney used the ADAPTER program in an office at Altai adjacent to Williams during a period in which he had frequent contact with Williams regarding the OSCAR/VSE project, Williams (and through him Altai) may well have been on constructive notice of Arney's breach of his duty of confidentiality toward CA. The district court did not address whether Altai was on constructive notice, thereby placing it under a duty of inquiry; rather the court's finding that only Arney affirmatively knew of the theft of CA's trade secrets and incorporation of those secrets into OSCAR 3.4 simply disposed of the issue of actual notice in connection with the creation of OSCAR 3.4. CA's claim of liability based on constructive notice, never considered in the district court's opinion, must be determined on remand.

With respect to actual notice, it is undisputed that CA's first complaint, filed in August 1988, informed Altai of Arney's trade secret violations in connection with the creation of OSCAR 3.4. The first complaint alleged that Arney assisted in the development of ADAPTER, thereby obtaining knowledge of CA's related trade secrets. It also alleged that Altai misappropriated CA's trade secrets by incorporating them into ZEKE.

In response to CA's complaint, Altai rewrote OSCAR 3.4, creating OSCAR 3.5. While we agree with the district court that OSCAR 3.5 did not contain any expression protected by copyright, it may nevertheless still have embodied many of CA's trade secrets that Arney brought with him to Altai. Since Altai's rewrite was conducted with full knowledge of Arney's prior misappropriation, in breach of his duty of confidentiality, it follows that OSCAR 3.5 was created with actual knowledge of trade secret violations. Thus, with regard to OSCAR 3.5, CA has a viable trade secret claim against Altai that must be considered by the district court on remand. This claim is grounded in Altai's alleged use of CA's trade secrets in the creation of OSCAR 3.5, while on actual notice of Arney's theft of trade secrets and incorporation of those secrets into OSCAR 3.4. The district court correctly stated that a state law claim based solely upon Altai's "use", by copying, of ADAPTER's non-literal elements could not satisfy the governing "extra element" test, and would be preempted by section 301. However, where the use of copyrighted expression is simultaneously the violation of a duty of confidentiality established by state law, that extra element renders the state right qualitatively distinct from the federal right, thereby foreclosing preemption under section 301.

We are also convinced that CA adequately pled a wrongful acquisition claim before Judge Mishler and Judge Pratt. In ruling that CA failed to properly plead a non-preempted claim, Judge Pratt relied heavily upon two allegations in CA's amended complaint. Id. at 563-64. They read as follows:

p 57. By reason of the facts stated in paragraph 39 and by copying from CA-SCHEDULER into ZEKE, ZACK and ZEBB the various elements stated in paragraphs 39-51, 54 and 55, defendant Altai has infringed [CA's] copyright in CA-SCHEDULER.

* * * * * *

p 73. Defendant's incorporation into its ZEKE, ZACK and ZEBB programs of the various elements contained in the ADAPTER component of [CA's] CA-SCHEDULER program as set out in paragraphs 39-51, 54 and 55 constitutes the willful misappropriation of the proprietary property and trade secrets of plaintiff [CA].

[720] From these pleadings, Judge Pratt concluded that the very same act, i.e., Altai's copying of various elements of CA's program, was the basis for both CA's copyright infringement and trade secret claims. See id. at 564. We agree with Judge Pratt that CA's allegations are somewhat inartfully stated. However, when taken together, the terms "incorporation" and "misappropriation" in paragraph 73 above suggest to us an act of a qualitatively different nature than the infringement pled in paragraph 57. House Report, at 5748 (" '[m]isappropriation' is not necessarily synonymous with copyright infringement").

In support of our reading, we note that paragraphs 65-75 of CA's amended complaint alleged facts that reasonably comprise the elements of a wrongful acquisition of trade secrets claim. CA averred that, while he was employed at CA, Arney learned CA's trade secrets regarding the ADAPTER program. CA further alleged that, after Arney went to work for Altai, Altai misappropriated those trade secrets by incorporating CA's ADAPTER program into its own product. Finally, CA claimed that the trade secret misappropriation was carried out "in a willful, wanton and reckless manner in disregard of [CA's] rights." In other words, Altai could have reasonably inferred from CA's allegations that CA's claim, in part, rested on Williams' "wanton and reckless" behavior in the face of constructive notice.

In addition, while responding to Altai's preemption argument in its motion to dismiss and for summary judgment, CA specifically argued in its brief to Judge Mishler that "it can easily be inferred that Mr. Arney was hired by Altai to misappropriate [CA's] confidential source code for Altai's benefit." At oral argument, CA further contended that:

The circumstances of Mr. Arney's hiring suggested that Mr. Williams wanted more than Mr. Arney's ability and in fact got exactly what he wanted. And that is Computer Associates' confidential Adapter technology.

* * * * * *

[Arney testified that he] surreptitiously took that code home from Computer Associates after giving notice he was going to go to work for Altai, and after being hired by Mr. Williams to come to Altai and reconstruct Zeke, to work on the MVS operating system.

In the aftermath of Judge Mishler's ruling in its favor on Altai's motion to dismiss and for summary judgment, CA reasonably believed that it had sufficiently alleged a non-preempted claim. And, in light of CA's arguments and Judge Mishler's ruling, Altai clearly was on notice that the amended complaint placed non-preempted trade secret claims in play. See 5 Charles A. Wright & Arthur R. Miller, Federal Practice and Procedure § 1215, at 136-38 (2d ed. 1990) (federal pleading standards require plaintiff to provide defendant with fair notice of claim and grounds it rests on).

Accordingly, we vacate the judgment of the district court and remand for reconsideration of those aspects of CA's trade secret claims related to Altai's alleged constructive notice of Arney's theft of CA's trade secrets and incorporation of those secrets into OSCAR 3.4. We note, however, that CA may be unable to recover damages for its trade secrets which are embodied in OSCAR 3.4 since Altai has conceded copyright liability and damages for its incorporation of ADAPTER into OSCAR 3.4. CA may not obtain a double recovery where the damages for copyright infringement and trade secret misappropriation are coextensive.

However, additional trade secret damages may well flow from CA's creation of OSCAR 3.5. Judge Pratt correctly acknowledged that "[i]f CA's claim of misappropriation of trade secrets did not fail on preemption grounds, it would be necessary to examine in some detail the conflicting claims and evidence relating to the process by which Altai rewrote OSCAR and ultimately produced version 3.5." Computer Assocs., 775 F.Supp. at 554-55; see also 1 Milgrim § 5.04[d], at 5-148 ("after notice, the [innocent] second user should cease the use, and if he does not he can be enjoined and held liable for damages arising from such use subsequent to notice"). Since we hold that CA's trade secret claims [721] are not preempted, and that, in writing OSCAR 3.5, Altai had actual notice of Arney's earlier trade secret violations, we vacate and remand for such further inquiry anticipated by the district court. If the district court finds that CA was injured by Altai's unlawful use of CA's trade secrets in creating OSCAR 3.5, CA is entitled to an award of damages for trade secret misappropriation, as well as consideration by the district court of CA's request for injunctive relief on its trade secret claim.

CONCLUSION

In adopting the above three step analysis for substantial similarity between the non-literal elements of computer programs, we seek to insure two things: (1) that programmers may receive appropriate copyright protection for innovative utilitarian works containing expression; and (2) that non-protectable technical expression remains in the public domain for others to use freely as building blocks in their own work. At first blush, it may seem counter-intuitive that someone who has benefitted to some degree from illicitly obtained material can emerge from an infringement suit relatively unscathed. However, so long as the appropriated material consists of non-protectable expression, "[t]his result is neither unfair nor unfortunate. It is the means by which copyright advances the progress of science and art." Feist, --- U.S. at ----, 111 S.Ct. at 1290.

Furthermore, we underscore that so long as trade secret law is employed in a manner that does not encroach upon the exclusive domain of the Copyright Act, it is an appropriate means by which to secure compensation for software espionage.

Accordingly, we affirm the judgment of the district court in part; vacate in part; and remand for further proceedings. The parties shall bear their own costs of appeal, including the petition for rehearing.

ALTIMARI, Circuit Judge, concurring in part and dissenting in part:

Because I believe that our original opinion, see Computer Assoc. Int'l v. Altai, Nos. 91-7893(L), 1992 WL 139364 (2d Cir. June 22, 1992), is a reasoned analysis of the issues presented, I adhere to the original determination and therefore concur in Part 1 and respectfully dissent from Part 2 of the amended opinion.

740 F.Supp. 37 (1990)

[38] [39] [40] [41] Henry B. Gutman, Kerry L. Konrad, John S. Beckerman, Karen F. Conway, O'Sullivan Graev & Karabell, New York City, and Thomas J. Dougherty, Skadden, Arps, Slate, Meagher & Flom, Boston, Mass., for Lotus Development Corp.

Lawrence G. Papale, Cannata, Genovese & Papale, San Francisco, Cal., and Edward C. Saltzberg, Warner & Stackpole, Boston, Mass., for Stephenson Software, Ltd.

Paul R. Gupta, David A. Guberman, Barbara O'Donnell, Brian C. Levey, Nereyda F. Garcia, Kenneth R. Berman, Sherin and Lodgen, Boston, Mass., and Walter G. Murphy, Peter C. Kober, Murphy, DeMarco & O'Neill, P.C., Boston, Mass., for Paperback Software Intern.

OPINION

[42] 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, 1A, 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. 246).^[1]

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 resolved in favor of the plaintiff, Lotus.

I. A BACKGROUND STATEMENT ABOUT COMPUTERS, COMPUTER PROGRAMS, AND COPYRIGHTABILITY

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 law.

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.

[43] 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, 677.

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 result.

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 computer can understand directly, are commonly represented by 0's and 1'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 [44] 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) form.

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):

XXXXXXXXXXXXXXXX; XXXXXXXXXXXXXXXX; XXXXXXXXXXXXXXXX.

An "intermediate"-level programming language is assembly 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:

LOAD B; DIV C; ADD A.

Because of the primitive nature of assembly language, even relatively simple computations can require long and complex programs.

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 (FOR mula TRAN slation), COBOL (COmmon B usiness O riented L anguage), 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:

A + B/C.

Unlike machine language, which is unique to each kind of 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 nto 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 a kind of [45] 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 Computer Corp., 714 F.2d 1240, 1243 (3d Cir.1983) (source and object code copyrightable), cert. dismissed, 464 U.S. 1033, 104 S.Ct. 690, 79 L.Ed.2d 158 (1984); GCA Corp. 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, 107 S.Ct. 877, 93 L.Ed.2d 831 (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 Cash 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 [46] 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.

II. CONSTITUTIONAL CONSTRAINTS

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 bounds 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, 9 S.Ct. 36, 39, 32 L.Ed. 425 (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.").

III. CONGRESSIONAL MANDATES AND JUDICIAL INTERPRETATION

A. Sources of Guidance

1. Precedent on Determining Statutory Meaning

In Kelly v. Robinson, 479 U.S. 36, 107 S.Ct. 353, 93 L.Ed.2d 216 (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 [95 S.Ct. 1917, 1935, 44 L.Ed.2d 539] (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 member of a sentence, but look to the provisions of the whole law, and to its object and [47] policy."'" Offshore Logistics, Inc. v. Tallentire, 477 U.S. 207, 221 [106 S.Ct. 2485, 2493, 91 L.Ed.2d 174] (1986) (quoting Mastro Plastics Corp. v. NLRB, 350 U.S. 270, 285 [76 S.Ct. 349, 359, 100 L.Ed. 309] (1956) (in turn quoting United States v. Heirs of Boisdoré, 8 How. [49 U.S.] 113, 122 [12 L.Ed. 1009] (1850))).

Id. at 43, 107 S.Ct. at 358. 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." Id.

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, "photographs 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, Congress added "sound recordings" to the list, Act of Oct. 15, 1971, Pub.L. 92-140, § 1(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 [48] 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, 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, 23 S.Ct. 298, 300, 47 L.Ed. 460 (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, 107 S.Ct. 962, [49] 93 L.Ed.2d 1010 (1987); telephone books, Southern Bell Telephone & Telegraph Co. v. Associated Telephone Directory Publishers, 756 F.2d 801 (11th Cir.1985); televised news reports, Pacific and Southern Co. v. Duncan, 744 F.2d 1490, 1494, reh'g denied, 749 F.2d 733 (11th Cir.1984), cert. denied, 471 U.S. 1004, 105 S.Ct. 1867, 85 L.Ed.2d 161 (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 Controls 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 Act).

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, phono-records, 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 the 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 [50] 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 result.

Act of Dec. 12, 1980, Pub.L. 96-517, 94 Stat. 3015, 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 rightful.

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 noncopyrightable 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 [51] 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's 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, 51 S.Ct. 216, 75 L.Ed. 795 (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, 56 S.Ct. 835, 80 L.Ed. 1392 (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, 82 S.Ct. 19, 7 L.Ed.2d 15 (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) (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 [52] 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, ___ U.S. ___, 110 S.Ct. 1750, 1759, 109 L.Ed.2d 184 (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 copyrightable).

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. Kelly, 479 U.S. at 43, 107 S.Ct. at 358. 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, 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, 105 S.Ct. 2218, 2223, 85 L.Ed.2d 588 (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, 74 S.Ct. 460, 471, 98 L.Ed. 630 reh'g denied, 347 U.S. 949, 74 S.Ct. 637, 98 L.Ed. 1096 (1954). See also Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 432, 104 S.Ct. 774, 783, 78 L.Ed.2d 574 (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, [53] to stimulate artistic creativity for the general public good.'") (quoting Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156, 95 S.Ct. 2040, 2043, 45 L.Ed.2d 84 (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 line 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-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 notice.

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)(1); 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 process-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, 25 L.Ed. 841 (1879). [54] 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 bookkeeping.

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.2d 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 declared.

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 other 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 copyrightable.

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.

IV. THE LEGAL TEST FOR COPYRIGHTABILITY APPLICABLE TO THIS CASE

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

Defendants suggest that the user interface of Lotus 1-2-3 is a useful, "function[al]" [55] 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 instrument (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. E.g., SAS Institute, Inc. v. S & H Computer Systems, Inc., 605 F.Supp. 816, 830 (M.D.Tenn.1985) ("copying of the organization and 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, 1989 WL 200350 (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); Q-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, 1988 WL 146047 (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., 807 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, 108 S.Ct. 80, 98 L.Ed.2d 42 (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 [56] 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. I 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 they 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 sense different from their ordinary meanings. In what sense, though, they never say.

[57] 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 a 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 statute.

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, such 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 [58] 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 a 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 the 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 imperfection.

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 idea 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 [59] 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 copyrightable:

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 checkmated.

Morrissey v. Procter & Gamble Co., 379 F.2d 675, 678-79 (1st Cir.1967) (citations omitted). See also Concrete Machinery Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 606 (1st 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, 103 S.Ct. 176, 74 L.Ed.2d 145 (1982) (scènes à 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.) (scènes à faire not copyrightable because granting a copyright "would give the first author a monopoly on the commonplace ideas behind the scènes à faire"), cert. denied, 469 U.S. 1037, 105 S.Ct. 513, 83 L.Ed.2d 403 (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 the 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 [60] 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 expression 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 decision-maker 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 can.

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, whether 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.^[2] Still, though "judgment" is [61] 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 calculus.

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 case.

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, an 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), [62] for which only statutory damages should be awarded. 17 U.S.C. § 504(c) (1988).

D. Incentives and the Role of Advocacy

The advocate of broad copyrightability who understands 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 scale.

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.

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.

V. APPLICATION OF THE LEGAL TEST TO LOTUS 1-2-3

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][1] (1989), or "the `pattern' of the work," Chaffee, Reflections on the Law of Copyright: Part I, 45 Colum.L.Rev. 503, 513 (1945). In the 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 not.

[63] 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, 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 merely 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 closely.

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 designate rows. See Appendices 1 (VisiCalc), 2 (1-2-3), and 3 (VP-Planner). Cf. Multiplan, which also has a 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 [64] 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 a 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 "F1", "F2", "F3", etc.) on the keyboard. For example, in 1-2-3, "F1" 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, "F1" corresponds to the command "Help", "F2" to the 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 (e.g., 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 "/PPRA1.F19{enter}AGQ" — for the command sequence "Print, Printer, Range, Cell A1 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 [65] 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 of the macros. Also, because macro commands are typically invoked by entering the first letter of command choices (e.g., "/C" for copying, "/PPRA1.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 Interface 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 of 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. ¶ 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.

[66] 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 VisiCalc.

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 has 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., the 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 "/" key within formulas to indicate division, and the "enter" key to place keystroke [67] 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-". See 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 screen (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 copy 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". See 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 [68] (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.

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 established.

VI. COPYING OF LOTUS 1-2-3

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' copyright 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. 11, 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 ¶¶ 13-59.

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 his 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 [69] 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. ¶¶ 66-82.

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 proved 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 the 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 1-2-3.

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. [70] Everything 1-2-3 does, VP-Planner does.

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 VP-Planner "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 between 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, courts 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 10-page segment is an unauthorized reproduction of copyrighted material, and if the 10-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.

[71] VII. A POSTSCRIPT ON THE NATURE OF DECISIONMAKING IN THIS CASE

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)(1), 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, 107 S.Ct. at 358. 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, 107 S.Ct. at 358 ("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 [72] analogy itself is challenged by the precedent.

Thus, labeling a computer program as a "useful article" 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 subsist.

(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." See 1-2-3 Release 1A 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 minimum:

(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 — that 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 decisionmaking.

[73] 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 merit.

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 instead 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 high-value 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."

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 previously 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 [74] 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. Cf. F.R.E. 201(a), Notes of Advisory Committee (explaining "legislative facts"). See also In re Asbestos Litigation, 829 F.2d 1233, 1245-52 (3d Cir.1987) (concurring opinion of Becker, J.), cert. denied, 485 U.S. 1029, 108 S.Ct. 1586, 99 L.Ed.2d 901 (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, 44 S.Ct. 405, 406, 68 L.Ed. 841 (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, 106 S.Ct. 1758, 1762-63 n. 3, 90 L.Ed.2d 137 (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, [75] 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, 104 S.Ct. 3554, 82 L.Ed.2d 855 (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 work.

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. ¶¶ 72-73 (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 [76] 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?

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, 1st 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 is 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 expert 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 [77] 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, will 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:

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 [78] 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 defendants 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 been 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 use 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 1-2-3.

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 [79] 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 that 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, 36-38 (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.

VIII. OTHER DEFENSES

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 word 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 [80] 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 programs.

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 become 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 "screen 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 1A"), 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 [81] 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). See 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, 783 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. Artic International, Inc., 704 F.2d 1009, 1012 (7th Cir.) (same), cert. denied, 464 U.S. 823, 104 S.Ct. 90, 78 L.Ed.2d 98 (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.

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).

[82] 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 estoppel.

Defendants have the burden of proving laches. Costello v. United States, 365 U.S. 265, 282, 81 S.Ct. 534, 543, 5 L.Ed.2d 551 (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, 72 S.Ct. 12, 13, 96 L.Ed. 31 (1951); Puerto Rican-American Insurance Co. v. Benjamin Shipping Co., 829 F.2d 281, 283 (1st 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 days later, to bring suit. Id.

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 (1st 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. denied, ___ U.S. ___, 110 S.Ct. 1124, 107 L.Ed.2d 1030 (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 (1st 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 reasonable man would rely upon the representations made.'") (in turn quoting Bergeron v. Mansour, 152 F.2d 27, 30 (1st 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 [83] 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, 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 estoppel.

Another reason that defendants have failed to sustain a laches defense is that they have failed to demonstrate, any prejudice.

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 a 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.

IX. RESERVED RULINGS ON OBJECTIONS

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 case.

Although I agree that the "Visi-Calc 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 such 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), supra.

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 [84] 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.

ORDER

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 established.

(2) 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.

(3) A conference with respect to further proceedings will be held as specified in the Joint Procedural Order of this date.

[APPENDICES OMITTED]

[1] This 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).

[2] Despite 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.

[3] Newton's now-famous phrase — "on ye shoulders 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.

9 F.3d 823 (1993)

[824] [825] [826] [827] [828] [829] Shelley B. Don of Don & Hiller, Denver, CO (Earl S. Wylder and Watson W. Galleher of Don & Hiller, Denver, CO, and Jonathan [830] Band and Bryan A. Schwartz of Morrison & Foerster, Washington, DC, on the brief), for defendants-appellants.

Rodger L. Wilson, Denver, CO (Karl J. Dakin, Englewood, CO, on the brief), for plaintiff-appellee.

Morton David Goldberg, June M. Besek, David O. Carson, Jesse M. Feder of Schwab Goldberg Price & Dannay, New York City and Arthur R. Miller, of counsel, Cambridge, MA, for amici curiae.

Peter M.C. Choy, Mountain View, CA, for amicus curiae.

Before BRORBY, BARRETT, and EBEL, Circuit Judges.

EBEL, Circuit Judge.

The defendants appeal from the June 24, 1992, order of the district court in which it found that the defendants had infringed Gates' copyright on an engineering computer program and wrongfully misappropriated trade secrets. We conclude that the district court erroneously extended copyright protection to certain unprotectable elements of the computer program. We also conclude that the district court failed properly to determine the protectability of many of the elements of Gates' program which it found to have been copied by the defendants. Accordingly, we remand the copyright claims to the district court for a reconsideration of the programs in light of the test we set forth herein, which involves a determination of whether there was copying and a determination of whether the copying constitutes actionable infringement through application of the abstraction-filtration-comparison test.

Considering the trade secret claims, we conclude that Gates' claims were not preempted by federal law, that Gates made an adequate showing that certain of its mathematical constants were valuable trade secrets, and that Gates took adequate steps to protect the confidentiality of such trade secrets below and on appeal. Accordingly, we affirm those portions of the district court's opinion with respect to the trade secret claims.

FACTS

The plaintiff-appellee, Gates Rubber Co. ("Gates"), is a Colorado corporation that manufactures rubber belts for use in industrial machinery. Gates leads the industry in sales of industrial machine belts. In order to determine the proper rubber belt for a particular machine it is necessary to perform complicated calculations involving numerous variables. The complexity of these calculations is such that they have customarily been performed by an engineer and significant variance in outcome often resulted. In order to facilitate the efficient and accurate selection of belts, and to boost the sales of their products, Gates developed a computer program entitled "Design Flex 4.0." With this program a salesman can input a number of variables and thereby calculate the proper Gates belt for a machine. The program uses published formulas in conjunction with certain mathematical constants developed by Gates to determine belt size. Gates obtained a Certificate of Copyright Registration on its Design Flex program.

The defendant, Bando American ("Bando"), is a division of a Japanese corporation that competes with Gates in the manufacture and sale of industrial belts. Numerous Bando employees were formerly employees of Gates, including the defendants Allen Hanano (Bando's president), Ron Newman, and Steven Piderit.

Until 1988, the defendant, Steven R. Piderit, was a Gates' employee.^[1] While at Gates, Piderit had access to Gates' Design Flex program, including its components and the design and access codes.^[2] In 1988, Bando hired Piderit away from Gates and assigned him to develop a program that would assist [831] in the selection of the proper belts for industrial machinery. In June of 1989, Bando introduced a demonstration copy of "Chauffeur," a computer program similar to Gates' Design Flex program. The Chauffeur program was made available in March of 1990. Piderit claims to be the sole author of the Chauffeur program.

Gates filed this action in the U.S. District Court for the District of Colorado on January 4, 1992, alleging unfair competition, misappropriation of trade secrets, infringement of copyright, and breach of contract. On January 28, 1992, the district court held a hearing on Gates' request for a TRO, which was denied, and ordered experts appointed. On February 26, 1992, the plaintiff filed an amended complaint expanding its claims, naming additional parties, and requesting a permanent injunction. A hearing on the permanent injunction was held on March 26, 1992. On June 24, 1992, the district court issued its opinion finding that the defendants had infringed Gates' copyright and willfully and maliciously misappropriated trade secrets. In an order dated August 12, 1992, the court amended typographical errors in its opinion, and denied the defendant's motions to make additional findings, to alter and amend the judgment, for a new trial and to stay enforcement. This appeal was filed on August 25, 1992. The appellants claim that the district court erred when it (i) extended copyright protection to facts and ideas in the Design Flex program, and (ii) granted relief on Gates' trade secret claim.

This case presents a number of issues that have never been squarely before a panel of this circuit, most notably the proper test to be applied to determine the scope of copyright protection for computer programs. In an attempt to aid the district courts in this determination and to bring clarity to this difficult area of the law, we first set forth what we consider to be the best means to determine the scope of protection.^[3] In this first section, we seek to draw together the major issues that must be addressed and we try to organize the issues within a coherent framework that will be useable to the district courts that must address these claims in the first instance. We next briefly summarize the constitutional and statutory principles and the key judicial decisions that control and illuminate our analysis. As this analysis demonstrates, our approach is consistent with the evolving law in this area. We then apply our legal analysis to the facts in this case, finding that, in several respects, the district court erred in its application. Finally, we consider the trade secrets issues raised by the appellants.^[4]

DISCUSSION

I. THE COPYRIGHT INFRINGEMENT ISSUE.

A. The Test for Determining Whether the Copyright of a Computer Program Has Been Infringed.

In order to prevail on a claim of copyright infringement, the plaintiff must show: (1) ownership of a valid copyright, and (2) copying by the defendant of protected components of the copyrighted material. Feist Publications v. Rural Telephone Service Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 1296, 113 L.Ed.2d 358 (1991); Autoskill v. National Educational Support Systems, Inc., 994 F.2d 1476, 1487 (10th Cir.1993), cert. denied, ___ U.S. ___, 114 S.Ct. 307, 126 L.Ed.2d 254 (1993). A Certificate of Registration, if timely obtained, constitutes prima facie evidence of the validity of the copyright. [832] 17 U.S.C. § 410(c); Autoskill, 994 F.2d at 1487. Once the presumption pursuant to 17 U.S.C. § 410(c) is established, the defendant has the burden of overcoming it. Autoskill, 994 F.2d at 1487.

Williams Electronics, Inc. v. Artic International, Inc., 685 F.2d 870, 873 (3d Cir.1982).^[5]

Once the plaintiff has shown that it holds a valid copyright, it must next prove that the defendant unlawfully appropriated protected portions of the copyrighted work. This question involves two separate inquiries: 1) whether the defendant, as a factual matter, copied portions of the plaintiff's program;^[6] and 2) whether, as a mixed issue of fact and law, those elements of the program that have been copied are protected expression and of such importance to the copied work that the appropriation is actionable. 3 Melville B. Nimmer, Nimmer on Copyright § 13.01[B], at 13-8 to 13-15 (1993) (hereinafter "Nimmer"); see Arnstein v. Porter, 154 F.2d 464, 472-73 (2d Cir.1946).

A plaintiff can establish that the defendant copied his program either through the presentation of direct evidence, or through indirect evidence that shows (1) that the defendant had access to the copyrighted program, and (2) that there are probative similarities between the copyrighted material and the allegedly copied material.^[7] Autoskill, 994 F.2d at 1489; Atari Games Corp. v. Nintendo of America Inc., 975 F.2d 832, 837-38 (Fed.Cir.1992); Whelan Associates v. Jaslow Dental Laboratory, Inc., 797 F.2d 1222, 1231-32 (3d Cir.1986), cert. denied 479 [833] U.S. 1031, 107 S.Ct. 877, 93 L.Ed.2d 831 (1987); Arnstein, 154 F.2d at 468; 3 Nimmer § 13.01[B], at 10-12.^[8] Direct proof of copying is rare, Whelan, 797 F.2d at 1231; Roth Greeting Cards v. United Card Co., 429 F.2d 1106, 1110 (9th Cir.1970), and plaintiffs will typically rely on the indirect method of proof. Ultimately, to prove factual copying, the plaintiff must come forward with sufficient evidence that a reasonable factfinder, taking together the evidence of access and the similarities between the programs,^[9] could find that the second work was copied from the first.^[10]

Although we suggest that it will often be helpful to make an initial determination of whether the defendant copied portions of the plaintiff's program before determining whether the copying involved protectable elements under the copyright law, there may be cases where the issue of protectability can more efficiently be addressed first. The order of the analysis will depend on the individual facts and issues in each case. Of course, even if generalized copying is established in the first instance, it will ultimately still be necessary to establish copying of precisely identified protected elements of a program before copyright infringement can be established.

The court's inquiry does not end with a finding that the defendant copied portions of the plaintiff's program. Liability for copyright infringement will only attach where protected elements of a copyrighted work are copied. Baker v. Selden, 101 U.S. 99, 101-03, 25 L.Ed. 841 (1879). "[T]he mere fact that a work is copyrighted does not mean that every element of the work may be protected." Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 348, 111 S.Ct. 1282, 1289, 113 L.Ed.2d 358 (1991).

The Copyright Act provides:

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) (Supp.1993).^[11] Accordingly, in order to impose liability for copyright infringement, the court must find that the defendant copied protectable elements of the plaintiff's program and that those protectable elements comprise a substantial part of the plaintiff's program when it is considered as a whole. Autoskill, 994 F.2d at 1496-98; [834] Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1475-77 (9th Cir.), cert. denied, ___ U.S. ___, 113 S.Ct. 198, 121 L.Ed.2d 141 (1992); Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204, 208 (9th Cir.1988).

Determining which elements of a program are protectable is a difficult task. However, an effective test can be formulated from constitutional and statutory constraints and guided by existing case law to determine the scope of copyright infringement. In substantial part, we adopt the "Abstraction-Filtration-Comparison" test which we previously approved for use in the context of a preliminary injunction ruling in Autoskill, 994 F.2d at 1487-98. See also Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693, 701-14 (2d Cir.1992); Lotus Development Corp. v. Paperback Software International, 740 F.Supp. 37 (D.Mass.1990).^[12]

First, in order to provide a framework for analysis, we conclude that a court should dissect the program according to its varying levels of generality as provided in the abstractions test. Second, poised with this framework, the court should examine each level of abstraction in order to filter out those elements of the program which are unprotectable. Filtration should eliminate from comparison the unprotectable elements of ideas, processes, facts, public domain information, merger material, scenes a faire material, and other unprotectable elements suggested by the particular facts of the program under examination. Third, the court should then compare the remaining protectable elements with the allegedly infringing program to determine whether the defendants have misappropriated substantial elements of the plaintiff's program.

We now proceed to examine each of these steps in greater detail.

1. Abstraction

The first step in the analysis involves dissecting the allegedly infringed program according to the abstractions test. As Judge Learned Hand wrote in Nichols v. Universal Pictures Corp., 45 F.2d 119 (1930), cert. denied, 282 U.S. 902, 51 S.Ct. 216, 75 L.Ed. 795 (1931), a case dealing with the alleged copyright infringement of a theatrical script:

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 be no more than the most general statement of what the play is about, and at times might only consist 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.

Id. at 121. The abstractions test is especially well suited to the dissection of computer programs because the test breaks down a program in a way that parallels the typical development of a program. See Autoskill, 994 F.2d at 1491-92; Whelan, 797 F.2d at 1229-30; 3 Nimmer § 13.03[F], at 13-102.9 to 13-102.19.

We agree with Professor Nimmer that "applying [the abstractions] test conscientiously and systematically can help a court separate ideas from expression and eliminate from the substantial similarity analysis those portions of a work that are not eligible for copyright protection." 3 Nimmer § 13.03[F] 13-102.17. However, in and of itself, the abstraction test does not identify the protectable elements of a program. Rather, it is merely one tool that can be utilized to accomplish this task. Abstraction is particularly useful in enabling a court to filter out ideas and processes from protectable expression.

Application of the abstractions test will necessarily vary from case-to-case and program-to-program. Given the complexity and ever-changing nature of computer technology, we decline to set forth any strict methodology for the abstraction of computer programs. See generally Andrew H. Rosen, Virtual Reality: Copyrightable Subject Matter and the Scope of Judicial Protection, 33 Jurimetrics J. 35 (1992). Indeed, in most [835] cases we foresee that the use of experts will provide substantial guidance to the court in applying an abstractions test. However, a computer program can often be parsed into at least six levels of generally declining abstraction: (i) the main purpose, (ii) the program structure or architecture, (iii) modules, (iv) algorithms and data structures, (v) source code, and (vi) object code. See John W.L. Ogilvie, Defining Computer Program Parts Under Learned Hand's Abstractions Test in Software Copyright Infringement Cases, 91 Mich.L.Rev. 526 (1992) (hereinafter "Ogilvie").

The main purpose of a program is a description of the program's function or what it is intended to do. See Ogilvie at 534; Altai, 982 F.2d at 697 ("ultimate function or purpose"); Whelan, 797 F.2d at 1238 ("purpose"). When defining a program's main purpose, the court must take care to describe the program's function as specifically as possible without reference to the technical aspects of the program.

The program's architecture or structure is a description of how the program operates in terms of its various functions, which are performed by discrete modules, and how each of these modules interact with each other. The architecture or structure of a program is often reduced to a flowchart, which a programmer uses visually to depict the inner workings of a program. Paperback, 740 F.Supp. at 44-45. Structure exists at nearly every level of a program and can be conceived of as including control flow, data flow, and substructure or nesting. Control flow is the sequence in which the modules perform their respective tasks. See Ogilvie at 535; Whelan, 797 F.2d at 1230 (arrangement of modules); Gates Rubber, 798 F.Supp. at 1514 (sequence of events). Data flow describes the movement of information through the program and the sequence with which it is operated on by the modules. See Ogilvie at 535; Gates Rubber, 798 F.Supp. at 1514 ("described as being analogous to `receipt'"). Substructure or nesting describes the inner structure of a module whereby one module is subsumed within another and performs part of the second module's task. Ogilvie at 535.

The next level of abstraction consists of the modules. See Steven R. Englund, Note, Idea, Process, or Protected Expression?: Determining the Scope of Copyright Protection of the Structure of Computer Programs, 88 Mich.L.Rev. 866, 871, 899 (1990) (hereinafter "Englund"). A module typically consists of two components: operations and data types. An operation identifies a particular result or set of actions that may be performed. For example, operations in a calculator program might include adding or printing data. A data type defines the type of item that an operator acts upon such as a student record or a daily balance. See Ogilvie at 534-36.

Algorithms and data structures are more specific manifestations of operations and data types, respectively. An algorithm is a specific series of steps that accomplish a particular operation. Ogilvie at 536; see Whelan, 797 F.2d at 1229-30. Data structure is a precise representation or specification of a data type that consists of (i) basic data type groupings such as integers or characters, (ii) values, (iii) variables, (iv) arrays or groupings of the same data type, (v) records or groupings of different date types, and (vi) pointers or connections between records that set aside space to hold the record's values. Ogilvie at 536-39; see Whelan, 797 F.2d at 1230.

The computer program is written first in a programming language, such as Pascal or Fortran, and then in a binary language consisting of zeros and ones. Source code is the literal text of a program's instructions written in a particular programming language. Trandes Corp. v. Guy F. Atkinson Co., 996 F.2d 655, 663 (4th Cir. 1993); Whelan, 797 F.2d at 1230. Object code is the literal text of a computer program written in a binary language through which the computer directly receives its instructions. Autoskill, 994 F.2d at 1492 n. 18; Altai, 982 F.2d at 698.

These generalized levels of abstraction will not, of course, fit all computer codes. Ordinarily, expert testimony will be helpful to organize a particular program into various levels of abstraction. In any event, as pointed [836] out earlier, the organization of a program into abstraction levels is not an end in itself, but it is only a tool that facilitates the critical next step of filtering out unprotectable elements of the program.

2. Filtration

Once a court has succeeded in identifying the various levels of abstraction of a computer program, it must filter out those elements of the program that are not protected by copyright. The Copyright Act provides that "idea[s], procedure[s], process[es], system[s], method[s] of operation, concept[s], principles, or discover[ies]" are not protectable. 17 U.S.C. § 102(b) (Supp.1993). Accordingly, the court must filter out these unprotectable elements. In order to effectuate the purposes behind the copyright laws, it is also appropriate to apply the doctrines of merger and scenes a faire to filter out unprotectable elements.

(a) The Idea-Expression Dichotomy

One of the fundamental tenets of copyright law is that protection extends only to the author's original expression and not to the ideas embodied in that expression. 17 U.S.C. § 102(b) codifies this tenet by denying copyright to ideas, concepts and principles. Numerous cases have expounded on the idea-expression dichotomy. See e.g., Feist, 499 U.S. at 344-51, 111 S.Ct. at 1287-90 (dicta); Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 556-57, 105 S.Ct. 2218, 2228-29, 85 L.Ed.2d 588 (1985); Baker v. Selden, 101 U.S. 99, 104, 107, 25 L.Ed. 841 (1879); Autoskill, 994 F.2d at 1491. Distinguishing between ideas and the expression of those ideas is not an easy endeavor, and given the varying nature of computer programs it must necessarily be ad hoc. With the framework provided by the abstractions test, however, we believe that a court can adequately filter out the ideas of a program. For example, the main purpose or function of a program will always be an unprotectable idea. See Whelan, 797 F.2d at 1236, 1238; Paperback, 740 F.Supp. at 65. Likewise, each module may typically be described by its individual purpose or function, and the basic function or purpose of a module will nearly always be an unprotectable idea or process. At the other end of the abstractions spectrum, source and object code, which are the literal elements of a program, will almost always be found to be protectable expression unless the doctrines of merger and scenes a faire come into play. See Altai, 982 F.2d at 702; Johnson Controls, Inc. v. Phoenix Control Systems, Inc., 886 F.2d 1173, 1175 (9th Cir.1989); Whelan, 797 F.2d at 1233. The intermediate levels of abstraction, such as structure, sequence, organization, and the like, are less prone to generalizations. While the structure of one program may be unprotectable because it constitutes an idea, the organization and arrangement of another program may be expressive and thereby protectable. And, of course, within a program certain structural elements may be protectable expression while other elements are unprotectable ideas.

(b) The Process-Expression Dichotomy

Although it is the idea-expression distinction that has received the primary attention in the cases construing copyright protection, the Copyright Act denies protection to other equally important program elements. When considering utilitarian works such as computer programs one of the most important of these elements is process. See Englund, 88 Mich.L.Rev. 866. 17 U.S.C. § 102(b) denies protection to procedures, processes, systems and methods of operation.^[13] The legislative history of the Copyright Act clarifies any ambiguity about the status of processes.

Some concern has been expressed lest copyright in computer programs should extend protection to the methodology or processes adopted by the programmer, rather than merely to the "writing" expressing his ideas. 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 [837] methods embodied in the program are not within the scope of the copyright law.

H.R.Rep. No. 1476, 94th Cong., 2d Sess. 57 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5670.

The Supreme Court addressed the copyrightability of a utilitarian process in Baker v. Selden, 101 U.S. 99, 25 L.Ed. 841 (1879). There, the Court considered whether the author of a book describing an accounting system could obtain protection over the system itself through copyright of the book. The Court distinguished the "art" or process from the author's explanation thereof and found the former unprotectable. Baker, 101 U.S. at 104. Other courts have similarly found processes unprotectable. See e.g., Altai, 982 F.2d at 704; Atari Games Corp. v. Nintendo of America, Inc., 975 F.2d 832, 838-39 (Fed. Cir.1992). Certain processes may be the subject of patent law protection under Title 35 of the United States Code. See Atari Games, 975 F.2d at 839-40; Englund, 88 Mich.L.Rev. at 893-94. Although processes themselves are not copyrightable, an author's description of that process, so long as it incorporates some originality, may be protectable. See Applied Innovations, Inc. v. Regents of the Univ. of Minnesota, 876 F.2d 626, 636 (8th Cir.1989); Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1250-51 (3d Cir.1983), cert. dismissed, 464 U.S. 1033, 104 S.Ct. 690, 79 L.Ed.2d 158 (1984).

Returning then to our levels of abstraction framework, we note that processes can be found at any level, except perhaps the main purpose level of abstraction. Most commonly, processes will be found as part of the system architecture, as operations within modules, or as algorithms.

(c) Facts

The Copyright Act also denies protection to discoveries. 17 U.S.C. § 102(b). The Supreme Court squarely addressed the issue of the protectability of facts in its recent opinion in Feist Publications, Inc. v. Rural Telephone Services Co., 499 U.S. 340, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). In Feist, the Court considered the copyrightability of a telephone directory comprised merely of names, addresses, and phone numbers organized in alphabetical order. The Court rejected the notion that copyright law was meant to reward authors for the "sweat of the brow," and instead concluded that protection only extends to the original components of an author's work. As to facts, the Court found that

No one may claim originality as to facts. This is because facts do not owe their origin to an act of authorship. The distinction is one between creation and discovery: the first person to find and report a particular fact has not created the fact; he or she has merely discovered its existence. ... [O]ne who discovers a fact is not its maker or originator. The discoverer merely finds and records.

499 U.S. at 347, 111 S.Ct. at 1288 (internal quotations and citations omitted). Like ideas and processes, facts themselves are not protectable; however, an author's original compilation, arrangement or selection of facts can be protected by copyright. Feist, at 348, 111 S.Ct. at 1289; Applied Innovations, 876 F.2d at 636. However, "the copyright is limited to the particular selection or arrangement. In no event may copyright extend to the facts themselves." Feist, 499 U.S. at 350-51, 111 S.Ct. at 1290. In computer programs facts may be found at a number of levels of abstraction, but, will most often be found as part of data structures or literally expressed in the source or object codes.

(d) Public Domain

"The two fundamental criteria of copyright protection [are] originality and fixation in tangible form...." H.R.Rep. No. 1476, 94th Cong., 2d Sess. 51 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5664. 17 U.S.C. § 102(a) establishes that copyright can only subsist in "original works of authorship." (emphasis added). Originality in the field of copyright requires that the work be independently created by the author and that it possesses a minimal degree of creativity. Feist, 499 U.S. at 361, 111 S.Ct. at 1296. Accordingly, in determining copyright infringement, a court must filter out all unoriginal elements of a program, including those elements that are found in the public domain. [838] See Comprehensive Technologies International, Inc. v. Software Artisans, Inc., 3 F.3d 730, 736 (4th Cir.1993); Altai, 982 F.2d at 710; Atari Games, 975 F.2d at 839; Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1474-75 (9th Cir.1992), cert. denied, ___ U.S. ___, 113 S.Ct. 198, 121 L.Ed.2d 141 (1992); E.F. Johnson Co. v. Uniden Corp. of America, 623 F.Supp. 1485, 1499 (D.Minn. 1985). Unoriginal elements of a program may be found at any level of abstraction.

Once a court has filtered out a program's ideas, processes, facts, and unoriginal elements, it has eliminated most of those elements that are unprotected based on the first principles of copyright law. However, in order to give effect to these principles, the courts have devised two additional filtration doctrines. These are the doctrines of merger and scenes a faire.

(e) The Merger Doctrine

Under the merger doctrine, copyright protection is denied to expression that is inseparable from or merged with the ideas, processes, or discoveries underlying the expression. Concrete Machinery Co. v. Classic Lawn Ornaments, Inc., 843 F.2d 600, 606-607 (1st Cir.1988); Apple Computer, Inc. v. Microsoft Corp., 799 F.Supp. 1006, 1021 (N.D.Cal.1992), order clarified, 821 F.Supp. 616 (1993); Englund, 88 Mich.L.Rev. at 877. The merger doctrine is applied as a prophylactic device to ensure that courts do not unwittingly grant protection to an idea by granting exclusive rights to the only, or one of only a few, means of expressing that idea. See Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir.1971). If protection were granted to these expressions, it would so increase the cost of creation for others who seek to build on the work that it would impede progress in the arts. Such a result is contrary to the goals of copyright as embedded in the Constitution. See U.S. Const., art. I, § 8, cl. 8.

(f) Scenes A Faire

Under the scenes a faire doctrine, we deny protection to those expressions that are standard, stock, or common to a particular topic or that necessarily follow from a common theme or setting. Autoskill, 994 F.2d at 1494 (citing 3 Nimmer § 13.03[B][4], at 13-70); Atari, 672 F.2d at 616. Granting copyright protection to the necessary incidents of an idea would effectively afford a monopoly to the first programmer to express those ideas. Whelan, 797 F.2d at 1236-37; Landsberg v. Scrabble Crossword Game Players, Inc., 736 F.2d 485, 489 (9th Cir.), cert. denied, 469 U.S. 1037, 105 S.Ct. 513, 83 L.Ed.2d 403 (1984). Furthermore, where a particular expression is common to the treatment of a particular idea, process, or discovery, it is lacking in the originality that is the sine qua non for copyright protection. Feist, 499 U.S. at 348, 111 S.Ct. at 1289.

The scenes a faire doctrine also excludes from protection those elements of a program that have been dictated by external factors. See Plains Cotton Co-op Ass'n. v. Goodpasture Computer Serv., Inc., 807 F.2d 1256, 1262 (5th Cir.), cert. denied, 484 U.S. 821, 108 S.Ct. 80, 98 L.Ed.2d 42 (1987); Apple Computer, 799 F.Supp. at 1022-26. In the area of computer programs these external factors may include: hardware standards and mechanical specifications, see Manufacturer's Technologies, Inc. v. Cams, Inc., 706 F.Supp. 984, 995 (D.Conn.1989), software standards and compatibility requirements,^[14] Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510, 1525-27 (9th Cir.1993), computer manufacturer design standards, target industry practices and demands, see Plains Cotton, 807 F.2d at 1262, and computer industry programming practices, see Apple Computer, 799 F.Supp. at 1033. 3 Nimmer § 13.03[F][3][a]-[e], at 13-102.21 to 13-102.28.

3. Comparison

After the court has filtered out those elements of the original program that it has found to be unprotectable, it is left with a [839] core of protected elements that can be compared to the alleged infringing program. Ultimately the court must decide whether those protectable portions of the original work that have been copied constitute a substantial part of the original work—i.e. matter that is significant in the plaintiff's program. See Altai, 982 F.2d at 710-11; Atari, Inc., 672 F.2d at 619; Paperback, 740 F.Supp. at 61; 3 Nimmer § 13.03[A][2], at 13-46 to 13-48. This is primarily a qualitative rather than a purely quantitative analysis, see Whelan, 797 F.2d at 1245, and must be performed on a case-by-case basis.^[15]

B. Review of Constitutional and Statutory Principles and Key Judicial Precedent.

The test that we adopt today is firmly rooted in traditional principles of copyright law. The Constitution establishes an affirmative duty for Congress "[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." U.S. Const. art. I, § 8, cl. 8; see Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 428-29, 104 S.Ct. 774, 781-82, 78 L.Ed.2d 574 (1984); Mazer v. Stein, 347 U.S. 201, 219, 74 S.Ct. 460, 471, 98 L.Ed. 630 (1954). Copyright policy is meant to balance protection, which seeks to ensure a fair return to authors and inventors and thereby to establish incentives for development, with dissemination, which seeks to foster learning, progress and development.

In order to secure these goals Congress enacted The Copyright Act, 17 U.S.C. § 101 et seq., which establishes that

(a) 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. Works of authorship include the following categories:

(1) literary works;

....

(6) motion pictures and other audiovisual works;

....

17 U.S.C. § 102(a) (Supp.1993).

Computer programs are considered literary works for purposes of copyright analysis. 17 U.S.C. § 101 states:

"Literary works" are works ... expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material objects, such as ... film, tapes, disks, or cards, in which they are embodied.

....

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 result.

17 U.S.C. § 101 (1977 and Supp.1993). Atari Games Corp. v. Nintendo of America, Inc., 975 F.2d 832, 838 (Fed.Cir.1992); H.R.Rep. No. 1476, 94th Cong., 2d Sess. 54, reprinted in 1976 U.S.C.C.A.N. 5659, 5667 (The term "literary works" "also 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."). A computer program is protectable under copyright if two requirements are met: (1) it is fixed in a tangible medium of expression, and (2) the program is original. 17 U.S.C. § 102(a) (Supp.1993); M. Kramer Mfg. Co. v. Andrews, 783 F.2d 421, 433 (4th Cir.1986); H.R.Rep. No. 1476, 94th Cong., 2d Sess. 51- [840] 2, reprinted in 1976 U.S.C.C.A.N. 5659, 5664-65.^[16]

Much of the modern doctrine concerning the copyright of utilitarian works and the process-expression dichotomy owes its origins to the Supreme Court's opinion in Baker v. Selden, 101 U.S. 99, 25 L.Ed. 841 (1879), in which the Court considered the copyright of a book setting out a system of accounting. The Court held that neither the system itself nor the forms necessary to operate the system were protectable, although the author's particular expression of the system was protectable.

The copyright of a work on mathematical science cannot give to the author an exclusive right to the methods of operation which he propounds, or to the diagrams which he employs to explain them, so as to prevent an engineer from using them whenever occasion requires. The very object of publishing a book on science or the useful arts is to communicate to the world the useful knowledge which it contains. But this object would be frustrated if the knowledge could not be used without incurring the guilt of piracy of the book. And where the art it teaches cannot be used without employing the methods and diagrams used to illustrate the book, or such as are similar to them, such methods and diagrams are to be considered as necessary incidents to the art, and given therewith to the public; not given for the purpose of publication in other works explanatory of the art, but for the purpose of practical application.

Baker, 101 U.S. at 103.

One of the early attempts to apply the doctrine of copyright to computer programs came in Whelan Assoc. v. Jaslow Dental Laboratory, Inc., 797 F.2d 1222 (3d Cir. 1986), cert. denied, 479 U.S. 1031, 107 S.Ct. 877, 93 L.Ed.2d 831 (1987). The Whelan court extended copyright protection to the structure, sequence and organization of a computer program even though the literal elements were not copied. 797 F.2d at 1248. Moreover, the Third Circuit attempted to establish a principle to distinguish between idea and expression. It concluded that:

[T]he line between idea and expression may be drawn with reference to the end sought to be achieved by the work in question. In other words, the purpose or function of a utilitarian work would be the work's idea, and everything that is not necessary to that purpose or function would be part of the expression of the idea.

797 F.2d at 1236 (emphasis omitted).

The Whelan court's articulation of this general rule for distinguishing idea from expression has been criticized extensively.^[17] However, Whelan did use the limiting doctrines of merger and scenes a faire to restrict the scope of protection. In any event, when a program is understood to encompass more than one idea, the general principle of Whelan provides a useful means to distinguish idea from expression. At its base, Whelan is premised upon traditional principles of copyright law, and its conclusion that the structure of a program may be protectable is sound.

In Lotus Development Corp. v. Paperback Software International, 740 F.Supp. 37 (D.Mass.1990), Judge Keeton, who has written extensively on the subject of software protection, considered the copyright of the Lotus 1-2-3 spreadsheet program. Like Whelan, the court concluded that the "structure, sequence and organization" of the software may be protectable. The Paperback court developed a three-part test that is a forerunner of the standard that we adopt in [841] this case. 740 F.Supp. at 59-62. First, the court formulated a conception of the program's idea based on the various abstractions that it found to describe the program. 740 F.Supp. at 60. Second, the court separated out those expressions that it found to be essential to the ideas. Finally, the court determined whether the remaining expressions were a substantial part of the copyrighted work. 740 F.Supp. at 61, 70.

The Second Circuit in Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir.1992), built on the case law that proceeded it. The court agreed with Whelan and Paperback that copyright can protect the non-literal structures of computer programs. 982 F.2d at 702-703. In analyzing the similarity of the computer programs before it, the Altai court utilized a three-part test that bore some similarity to the three-part test in Paperback. The Altai court articulated its test as an "Abstraction-Filtration-Comparison" test. Under the first prong the court dissected the program and identified the various levels of abstraction in the program. Altai, 982 F.2d at 707. Under the second prong, the court examined the separate elements within the program and eliminated those elements that it found to be either (1) ideas, (2) in the public domain, (3) required by factors external to the program, or (4) dictated by efficiency concerns such that the idea and expression were inseparable. Altai, 982 F.2d at 707-710. Those unprotectable elements were then filtered out before the two programs were compared. Finally, in the third prong, the court examined the remaining "core of protectable expression" to determine whether the defendant's program misappropriated substantial portions of the plaintiff's program. Altai, 982 F.2d at 710-711. We accept this basic three-part analysis and seek only to elaborate upon the various steps and to clarify the role of the abstraction test. We suggest that a court will often be assisted in determining the factual issue of copying if both programs are first compared in their entirety without filtering out the unprotected elements. Such a preliminary step does not obviate the ultimate need to compare just the protected elements of the copyrighted program with the alleged infringing program. However, an initial holistic comparison may reveal a pattern of copying that is not obvious when only certain components are examined.

The Supreme Court's most recent pronouncements in the area of copyright law came in Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991). Although Feist concerned the protectability of telephone directories rather than computer programs, the Court clarified several principles of copyright law applicable to the area of computers. The Court held that facts are not copyrightable regardless of the effort the author undertook to discover or compile them. In doing so the court rejected the "sweat of the brow" doctrine, which maintained that copyright was meant to protect and reward the efforts of an author. The court established that it is originality, not effort, that is the basis of copyright protection. However, the Court concluded that the original organization, selection, or arrangement in a work that is comprised exclusively of unprotectable facts could nevertheless be protected.

A panel of this circuit recently considered computer program copyright infringement in Autoskill, Inc. v. National Educational Support Systems, Inc., 994 F.2d 1476 (10th Cir. 1993), cert. denied, ___ U.S. ___, 114 S.Ct. 307, 126 L.Ed.2d 254 (1993). We upheld the grant of a preliminary injunction against the developers of a program designed to test and train individuals with reading deficiencies. Because the case involved a preliminary injunction, we only reviewed the district court's ruling to determine if the plaintiff had established a prima facie case with reasonable probability of success, and we expressly refrained from dictating a precise test for determining copyright infringement. Albeit, we affirmed the district court's application of the "Abstraction-Filtration-Comparison" test and application of the doctrines of merger, scenes a faire, and public domain.

We find in these and other cases that have considered the copyrightability of computer programs that there has begun to be developed a coherent approach to the protectability analysis. The approach that we outline [842] today is consistent with this evolving approach to the copyright protection of computer programs.

C. Applying the Abstraction-Filtration-Comparison Test to the Computer Programs at Issue in This Case.

The district court undertook an analysis similar to that which we set forth today. First, it determined whether, as a factual matter, the Chauffeur program had been copied from the Design Flex program.^[18] The court initially found that the defendants had access to the Design Flex program. It then considered the testimony of the expert witnesses and identified a number of similarities between the two programs. The court concluded that "the only explanation regarding the constants, the install files, and the overall data flow and presentation, is that the Chauffeur program was copied from the Design Flex program." Gates Rubber Co. v. Bando American, Inc., 798 F.Supp. 1499, 1516 (D.Colo.1992).

Next, the court applied the abstractions test to identify "unprotectable ideas." The court dissected the program and considered whether certain of the elements more closely approximated idea or expression. The court concluded that the merger doctrine and the scenes a faire doctrine were inapplicable. Finally, the court evaluated what it regarded as the protectable elements and determined that they were sufficiently significant to the Design Flex program to conclude that the defendants had infringed on Gates' copyright in the Design Flex program when it copied such elements. Gates Rubber, 798 F.Supp. at 1519.

The copyright issues on appeal all revolve around whether the district court erroneously extended copyright protection to unprotectable elements of the Design Flex program. The appellants argue that the court failed to consider whether three of the elements of the Design Flex program were protectable, and that it applied the wrong legal standard in protecting certain elements of the Design Flex program. The appellants argue that if a proper filtration analysis were conducted, the Chauffeur program would not be found to have infringed any protectable elements of the Design Flex program.

The district court ultimately concluded that the defendants had misappropriated ten elements of the Design Flex program that were protected by Gates' copyright. They included: menus, constants, sorting criteria, control flow, data flow, the engineering calculation module, the design module, common errors, fundamental tasks, and install files. We conclude that the district court failed to undertake a proper filtration analysis with respect to several elements and that it erroneously found other elements to be protectable. Accordingly, we remand for further consideration by the district court.^[19]

Constants

Constants are the invariable integers that comprise part of the formulas used to perform the calculations in the programs. The district court failed to consider whether the constants were unprotectable processes or facts or whether they were subject to the merger doctrine. In failing to undergo the filtration process, the court skipped an essential step in the copyright infringement analysis and as a result extended copyright protection to an unprotectable element of Design Flex.

The record reveals that these constants are facts that are unprotectable under copyright law. The constants in the Design Flex program represent scientific observations of physical relationships concerning the load that a particular belt can carry around certain [843] sized gears at certain speeds given a number of other variables. These relationships are not invented or created; they already exist and are merely observed, discovered and recorded. Such a discovery does not give rise to copyright protection. See Feist, 499 U.S. at 347, 111 S.Ct. at 1288 ("[F]acts do not owe their origin to an act of authorship. The distinction is one between creation and discovery: the first person to find and report a particular fact has not created the fact; he or she has merely discovered its existence.").

Gates claims that the constants should be protected because it spent thousands of hours testing the relationships and because engineers ultimately had to determine the best figure to represent the test results.^[20] However, this argument amounts to an assertion of the "sweat of the brow" doctrine which has been rejected by the Supreme Court. Feist, 499 U.S. at 353-54, 111 S.Ct. at 1291-92.

Accordingly, while the constants were probative of the factual question whether the defendants copied from the Design Flex program,^[21] they were unprotectable and therefore should have been filtered out before the district court addressed the ultimate question of whether the defendants infringed on Gates' copyright. Instead, the court relied heavily on the similarity of the constants in the two programs when it concluded that Chauffeur infringed on Gates' copyright. It noted that the constants "lie at the heart of the dispute," and gave "special regard to the mathematical constants" in finding that the defendants had violated Gates' copyright. Gates Rubber, 798 F.Supp. at 1518-19. Because of the court's emphasis on the constants in its reasoning, and our finding that the constants are unprotectable facts, we remand for the district court to consider whether the remaining protectable elements found to have been copied are such a substantial part of the Design Flex program that their misappropriation constitutes copyright infringement.

Menus and Sorting Criteria

These terms are not defined in the district court opinion. However, menus may mean the visual screen displays that present a computer operator with a limited number of commands available at a given stage in the computer program's operation. Lotus Development Corp. v. Borland International, Inc., 799 F.Supp. 203, 206 (D.Mass. 1992). Sorting criteria would ordinarily mean the factors that determine how the data in the program is organized. The district court failed to undertake a proper filtration analysis with respect to the menus and sorting criteria. Because the record before us is ambiguous and incomplete with regard to these terms, we are unable to determine on appeal whether these elements are protectable.

The defendants claim that the menus and the sorting criteria are visual components of the programs as to which Gates has waived all claims of infringement. At trial, counsel for Gates stated that the "plaintiff is willing to stipulate that we are making no claim as to trade secret or copyright as to the screens of these computer programs ..." Aplt.Apx. at 266. When asked about its claims concerning the menus and sorting criteria at oral argument in this appeal, however, Gates asserted that it had only waived its claims concerning the visual screen displays, and that it maintained a copyright claim on the written elements of the program that created those displays.

The district court failed to clarify whether it was referring to the visual screen displays [844] or some other aspect of the program when it discussed the menus and sorting criteria, and it failed to address whether the visual screen display can be separated from the program generating the visual screen display for purposes of the stipulation. Accordingly, we remand for a clarification of the terms "menu" and "sorting criteria"; for a determination of whether Gates has waived its infringement claims with respect to these elements; and for a determination of the protectability of such elements if Gates is determined not to have waived its infringement claim with regard to them.

Control and Data Flow

Control flow refers to the overall sequence of actions and events in a program. Data flow is the sequence of actions taken on each piece of information, that is, how the data travels through the program. The district court found that "the flow of these two types of information are closer to the expression of how the task is performed than the idea of undertaking calculation of belts and drives by use of a computer program." Gates Rubber, 798 F.Supp. at 1518. The defendants object that this conclusion is erroneously predicated on the dicta in Whelan that each program has only one idea. See Whelan, 797 F.2d at 1236. They assert that the control and data flow elements occur at such high levels of abstraction that they are inappropriate for copyright protection.

A fair reading of the district court opinion suggests that the court recognized that a computer program may contain more than one idea, and that unprotected ideas may be found throughout the program. However, we are more concerned by the district court's failure to examine the control and data flow in light of the process-expression dichotomy. Again, the district court failed to define exactly what it meant by control flow and data flow and the record is unclear.^[22] We remand for clarification of the terms "control flow" and "data flow" and for reconsideration of these elements in light of the idea-expression and process-expression dichotomies as they have been set forth in this opinion.

Engineering Calculation and Design Modules

The program performs its calculations and selects the proper belt through a series of operating instructions contained in modules. The district court concluded that:

The modules of the program were also found to be substantially similar. These modules, like chapters of a novel or scenes from a play, performed particular functions — here the engineering calculations and the design aspect of the program (containing the V-belt design algorithms). Concerning the former module, it was noted that behavior was similar, and with the latter the similarity concerned overall structure and organization. With regard to the former module, this falls closer to the expression range because, although the pure engineering aspect in a broad sense may be more likely to be not protected, the relevant engineering modules in the two programs contain particular elements which perform in similar manners. The latter module is somewhat more difficult as it involves algorithms, or procedures for solving given types of mathematical problems. The Court here rejects the argument that while the remaining portion [of the program] is properly protected under copyright law, the algorithms, as a "process" can only be covered by patent law. Such a holding would tend to fragment further the rather tenuous continuity found in copyright law concerning computer programs. This conclusion is supported by the Whelan decision. 797 F.2d at 1229.

Gates Rubber, 798 F.Supp. at 1518. (emphasis added).

The district court identified two modules — the engineering module and the design module — and it found them to be protected for different reasons. The appellant contests this finding, asserting that calculation module, design module, and engineering module [845] are just different names for the same module. Gates has failed to brief this issue. The expert testimony casts doubt on the district court's interpretation that the engineering module and the design module are two separate modules; however, the record is not sufficiently clear to resolve the dispute.

The district court found that the engineering module was expression rather than idea because of "particular elements which perform in similar manners." Gates Rubber, 798 F.Supp. at 1518. However, the district court failed to identify those "particular elements" upon which it based its decision, and it failed to analyze with any particularity whether those elements were ideas, processes, or facts. If, as the district court seems to suggest, the algorithms are "process," then they would not be protectable under copyright law. There remains the possibility that they are expressions, but, the court will then need to address the merger doctrine. Further, defendants have drawn our attention to evidence that was before the district court that tends to show that certain module functions were standard in the industry. There is no indication that the district court analyzed those components of the module under the scenes a faire doctrine. Accordingly, we remand for clarification of the district court's analysis and consideration of the modules in light of the process-expression dichotomy, merger and scenes a faire doctrines. Unless the district court provides us with sufficient detail to understand its ruling, we are unable to provide meaningful review of this finding.

Common Errors

Common errors or misbehaviors are instances in which the two programs share similar errors when not performing correctly or as intended. See Atari Games Corp. v. Nintendo of America, 975 F.2d 832, 845 (Fed.Cir.1992); M. Kramer Manufacturing Co. v. Andrews, 783 F.2d 421, 446 (4th Cir. 1986). The experts in the instant case identified two such common errors. First, both programs identify that it is impossible to compute a maximum center distance that is less than a minimum center distance, but both programs attempt to do so anyway. Second, both programs will jump to the wrong menu if the cursor happens to be over a certain character during one of the input sequences.

While common errors may often be strong evidence of copying as a factual matter,^[23] they do not assist in determining what material is protectable under copyright law. BellSouth Advertising & Publishing Corp. v. Donnelley Information Publishing, Inc., 999 F.2d 1436 (11th Cir.1993). Relying on several cases that have held that "common errors are the strongest evidence of copying," Gates argues that the common errors should be considered protectable." Aplee.Br. at 33. See Atari Games, 975 F.2d at 845; M. Kramer, 783 at 446; E.F. Johnson Co. v. Uniden Corp. of America, 623 F.Supp. 1485, 1496 (D.Minn.1985). However, none of the cases cited by Gates held that the actual misbehavior or faulty operation of the computer was protected. Rather, the cases stand for the limited proposition that evidence that two programs contain the same unnecessary or defective textual instructions is probative on the issue of copying. None of the cases cited considered the protectability of those instructions. Errors per se are not protectable, although the expression containing the error may be protectable if it otherwise meets the test for protectability set forth in this opinion. That analysis is lacking here. Thus, it is necessary for us to remand on this issue.

Fundamental Tasks

We normally would associate the term "fundamental tasks" with the highest level of abstraction — that is, the ideas or purposes underlying a program. In the instant case, the district court found the fundamental tasks of the Design Flex program to be protectable expression, but it failed to explain what it thought the fundamental tasks of the Design Flex program were. The district court stated that

[846] [a]lthough "fundamental tasks" may in a broader sense merely describe what are necessary means to effect a particular end, the term here is more specific due to the types of tasks which were available to achieve the particular end of designing belts and drives.

Gates Rubber, 798 F.Supp. at 1519. This discussion suggests the district court held a different understanding of the term "fundamental tasks" than what we would normally understand it to mean. However, we do not understand what the district court meant, nor do we have the benefit of the district court analysis beyond its mere conclusion that the merger doctrine is not applicable. Accordingly, we must remand for further analysis of this element as well.

Install Files

The install files here are separate utility programs that are used to load the program from a floppy disk onto a hard disk. They are part of the Disk Operating System and apparently are not part of the Design Flex program. Accordingly, it is not clear that Gates has a copyright claim on the install files. The district court failed to make adequate findings on this element to enable us to determine if the install files were covered by Gate's copyright and it failed to engage in a filtration analysis as to this element. Accordingly, we remand for a determination of whether Gates held a copyright on the install files and for a reconsideration of the install files in light of the test we have set forth herein.^[24]

II. THE TRADE SECRET ISSUE.

The district court concluded that Bando had misappropriated trade secrets belonging to Gates and ordered Bando to "return any and all information containing the constants used in either the Chauffeur program or the Design Flex program ... [and] restrained [them] from further use of these constants." Gates Rubber, 798 F.Supp. at 1523. Bando appeals this order and the underlying finding of trade secret misappropriation alleging that: (1) the state law misappropriation claim is preempted by 17 U.S.C. § 301, (2) the constants have no competitive economic value and are therefore not appropriately considered trade secrets, and (3) the disclosure of the constants during the course of the trial, in open court, deprived them of their status as trade secrets. Aplt.Br. at 14.

A. Federal Preemption of the Trade Secret Claims

Bando contends that the district court incorrectly considered Gates' state law misappropriation claim because the claim was preempted by 17 U.S.C. § 301. Section 301(a) provides that:

(a) On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by Section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.

17 U.S.C. § 301(a) (emphasis added). However, § 301(a) is qualified by § 301(b), which provides in relevant part:

(b) Nothing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to —

(1) subject matter that does not come within the subject matter of copyright as specified by sections 102 and 103, including works of authorship not fixed in any tangible medium of expression; or

(2) any cause of action arising from undertakings commenced before January 1, 1978;

(3) activities violating legal or equitable rights that are not equivalent to any of the [847] exclusive rights within the general scope of copyright as specified by section 106; ...

....

17 U.S.C. § 301(b) (Supp.1993).

Thus, a state common law or statutory claim is preempted by Section 301 if: "(1) the work is within the scope of the `subject matter of copyright' as specified in 17 U.S.C. §§ 102 and 103; and (2) the rights granted under state law are equivalent to any exclusive rights within the scope of federal copyright as set out in 17 U.S.C. § 106." Ehat v. Tanner, 780 F.2d 876, 878 (10th Cir.1985), cert. denied, 479 U.S. 820, 107 S.Ct. 86, 93 L.Ed.2d 39 (1986) (citing Harper & Row Publishers, Inc. v. Nation Enterprises, 723 F.2d 195, 199-200 (2d Cir.1983), rev'd on other grounds, 471 U.S. 539, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985)).

In its amended complaint, Gates alleged that "the use of the proprietary data, engineering formula, and the code of the Design Flex and the Life in Hours computer programs constitute a misappropriation of the trade secret [sic] of The Gates Rubber Company as stated in the Colorado Uniform Trade Secrets Act, C.R.S. 7-74-102(2)." Aplt.Apx. at 8. The parties do not dispute that the computer programs at issue in this case fall within the "subject matter of copyright" as specified by 17 U.S.C. §§ 102 and 103. Accordingly, the question before us is whether the rights granted by those provisions of the Colorado Uniform Trade Secrets Act, Colo.Rev.Stat. 7-74-102(2), upon which Gates relies, are equivalent to any of the exclusive rights granted by the Copyright Act, 17 U.S.C. §§ 102-103.

Section 106 of the Copyright Act grants to the copyright owner the exclusive rights to: (i) reproduce the copyrighted work; (ii) prepare derivative works; (iii) distribute copies of the work; (iv) perform the work publicly; and (v) display the work publicly. 17 U.S.C. § 106 (1977 and Supp.1993). In order to determine whether Gates' misappropriation claim asserts rights equivalent to those delineated in Section 106, we refer to the elements of the state law cause of action. Federal law will preempt "a state-created right if that right may be abridged by an act which, in and of itself, would infringe one of the exclusive rights" established by federal law. G.S. Rasmussen & Assoc. v. Kalitta Flying Service, Inc., 958 F.2d 896, 904 (9th Cir.1992), cert. denied, ___ U.S. ___, 113 S.Ct. 2927, 124 L.Ed.2d 678 (1993). However, if a state cause of action requires an extra element, beyond mere copying, preparation of derivative works, performance, distribution or display, then the state cause of action is qualitatively different from, and not subsumed within, a copyright infringement claim and federal law will not preempt the state action. Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693, 716 (2nd Cir.1992).

Under Colorado law, to prove misappropriation of a trade secret, a plaintiff must show: (i) that he or she possessed a valid trade secret, (ii) that the trade secret was disclosed or used without consent, and (iii) that the defendant knew, or should have known, that the trade secret was acquired by improper means.^[25] The breach of a duty of trust or confidence "is the gravamen of such trade secret claims and supplies the `extra [848] element' that qualitatively distinguishes such trade secret causes of action from claims for copyright infringement that are based solely on copying."^[26] Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693, 717 (2nd Cir.1992); Trandes Corp. v. Guy F. Atkinson Co., 996 F.2d 655, 660 (4th Cir. 1993); S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1090 n. 13 (9th Cir.1989); Restatement (First) of Torts § 757 cmt. a (1939). Because Gates' claim for trade secret misappropriation under the Colorado Uniform Trade Secrets Act requires proof of a breach of trust or confidence — proof that is not required under the Copyright Act — Gates' state law claims are not preempted by federal law.

The appellants suggest that this court's opinion in Ehat v. Tanner, 780 F.2d 876 (10th Cir.1985), cert. denied, 479 U.S. 820, 107 S.Ct. 86, 93 L.Ed.2d 39 (1986), compels a different result. We disagree. The cause of action in Ehat sought damages for the reproduction and distribution of copyrighted notes from individuals who had no part in the misappropriation of the materials. Moreover, it was not necessary under the common law claims asserted in Ehat that the plaintiff show a breach of trust or confidence.

B. The Economic Value of the Constants

The appellants claim that the district court erred when it failed to set forth the elements of a trade secret claim and make specific findings as to each element. Further, the appellants argue that if the court had engaged in this analysis the constants would not have been found to be trade secrets because they had no competitive economic value.

What constitutes a trade secret is a question of fact that will only be disturbed if clearly erroneous. Network Communications v. Boor-Crepeau, 790 P.2d 901, 902 (Colo.App.1990). Recognizing that the term "trade secret" defies exact definition, the Colorado courts have enunciated a number of factors that are relevant in determining whether a trade secret exists. They include:

1) the extent to which the information is known outside the business;

2) the extent to which it is known to those inside the business, i.e., by the employees;

3) the precautions taken by the holder of the trade secret to guard the secrecy of the information;

4) the savings effected and the value of the holder in having the information as against competitors;

5) the amount of effort or money expended in obtaining and developing the information; and

6) the amount of time and expense it would take for others to acquire and duplicate the information.

Colorado Supply Co. v. Stewart, 797 P.2d 1303, 1306 (Colo.App.1990), cert. denied (Oct. 7, 1991). We are unable to find that the district court erred in its implicit finding that the constants were trade secrets and that they were misappropriated. There is evidence that Gates spent in excess of 25,000 man hours and over $500,000 developing and upgrading the Design Flex program. The program was considered to be one of the best of its kind and was an efficient application and marketing tool. Gates took extensive measures to protect the program and, in particular, the constants. Although there is some evidence that some of the constants might be "reverse engineered" through mathematical trial and error, that fact alone does not deprive the constants of their status as trade secrets.

C. Disclosure of the Trade Secrets at Trial

The defendants note that the numerical constants were revealed during the course of the permanent injunction hearing. They contend that as a result of these disclosures the constants lost their status as trade secrets and therefore it was inappropriate for [849] the district court to issue a permanent injunction.

Although the constants were disclosed at the permanent injunction hearing, we conclude that as a result of Gates' post-hearing measures to protect the confidentiality of the constants, they retained their status as trade secrets. Gates evidenced a continuing intent to maintain the secrecy of the constants. Under Colorado law, the holder of a trade secret is only required to exercise reasonable efforts to maintain its secrecy. See Colorado Supply, 797 P.2d at 1306; Network Telecommunications, 790 P.2d at 902. The record indicates that counsel for Gates monitored the presence of observers in the courtroom. Furthermore, after the hearing was completed, Gates had the permanent injunction hearing record placed under seal. Similarly, Gates has moved to place certain exhibits on appeal under seal. We conclude that Gates' post-hearing measures, including sealing the record, were adequate to maintain the secrecy of the constants under the facts of this case. Compare Littlejohn v. BIC Corp., 851 F.2d 673, 680 (3d Cir.1988) (failure to seek an order sealing record constitutes waiver of confidentiality interests).

The defendants point out that the record was not sealed until this appeal had already been instituted and the defendants had filed their opening brief. However, there has been no evidence that a competitor had access to or learned of the constants during the period after the hearing and before the record was sealed. As the case comes before us, the record has been sealed and Bando has been permanently enjoined from using or disclosing these constraints. Absent a showing that the constants were published outside the court records, we conclude that Gates' inadvertent and inconsequential disclosure of the constants at trial and delay in sealing the record, are inadequate to deprive the constants of their status as trade secrets.

CONCLUSION

The district court failed adequately to filter those portions of the Design Flex program that it found to have been misappropriated. Thus, the court did not eliminate those elements that are unprotectable under copyright law. As a result, the court relied on unprotectable elements within the Gates program in determining that the defendants had infringed Gates' copyright. Other elements were inadequately described and analyzed to permit us to review the district court's determination of protectability. Accordingly, we VACATE the finding of copyright infringement and REMAND for reconsideration of the copyright infringement claim in light of this opinion.

We conclude that Gates' trade secret claims are not preempted by federal law, that Gates made an adequate showing that the trade secrets were valuable, and that Gates took adequate steps to protect the confidentiality of the trade secrets below and on appeal. Accordingly, that portion of the district court's opinion concerning the trade secret claim is AFFIRMED.

[1] Both Piderit and Newman signed written agreements not to reveal trade secrets and to return all materials used during their employment with Gates. Piderit however thwarted Gates' policy of requiring immediate departure from its plant upon resignation by waiting four weeks after accepting Bando's offer before informing Gates of his decision to leave.

[2] There was evidence that Piderit pirated a copy of the Design Flex program and brought it with him to Bando.

[3] The court was aided in its analysis of the copyright law concerning computer programs by briefs submitted by amicus curiae: the American Committee for Interoperable Systems; Computer and Business Equipment Manufacturers Association; the International Anticounterfeiting Coalition, Inc.; Adobe Systems, Inc.; Apple Computer, Inc.; Computer Associates International, Inc.; Digital Equipment Corporation, Inc.; International Business Machines Corporation; Lotus Development Corporation; Wordperfect Corporation; and Xerox Corporation.

[4] Before us is the appellee's motion to protect trade secrets and copyrighted and confidential materials. This court, in an order dated November 25, 1992, ordered the appendices on the appeal temporarily sealed until this motion could be considered. In light of our treatment of the trade secret issues, we grant this motion. Further, the "Second Supplemental Appendix of Appellee the Gates Rubber Company" is accepted for filing and is ordered filed under seal.

[5] In the instant case, Gates presented evidence that it obtained a Certificate of Copyright Registration for the Design Flex Program. The district court held that the defendants had failed to present sufficient evidence to rebut the presumption of the copyright's validity. Gates Rubber Co. v. Bando American, Inc., 798 F.Supp. 1499, 1507 (D.Colo.1992). On appeal the defendants do not dispute that Gates held a valid copyright on the Design Flex program.

[6] Copying is used herein as a shorthand reference to any infringement of the copyright holder's exclusive rights that are set forth at 17 U.S.C. § 106. Ford Motor Co. v. Summit Motor Products, Inc., 930 F.2d 277, 291 (3d Cir.), cert. denied ___ U.S. ___, 112 S.Ct. 373, 116 L.Ed.2d 324 (1991). 17 U.S.C. § 106 establishes:

Subject to sections 107 through 120, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:

(1) to reproduce the copyrighted work in copies ...;

(2) to prepare derivative works based upon the copyrighted work;

(3) to distribute copies ... of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

....

17 U.S.C. § 106 (1977 and Supp.1993).

[7] In examining the similarities between two programs under the indirect method of proving copying it is ordinarily important to compare the whole works. Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F.2d 607, 618 (7th Cir.), cert. denied, 459 U.S. 880, 103 S.Ct. 176, 74 L.Ed.2d 145 (1982); Steven R. Englund, Note, Idea, Process, or Protected Expression?: Determining the Scope of Copyright Protection of the Structure of Computer Programs, 88 Mich.L.Rev. 866, 905-906 (1990); Anthony L. Clapes, Patrick Lynch & Mark R. Steinberg, Silicon Epics and Binary Bards: Determining the Proper Scope of Copyright Protection for Computer Programs, 34 UCLA L.Rev. 1493, 1570 (1987). We agree with the district court's conclusion that

it is far preferable, especially in an area of legal and technological sophistication as complex as this area of copyright protection, to draw upon a larger arsenal of facts in order to design or derive the appropriate legally significant facts. Once these are gathered and expert testimony is heard, the court can then analyze which portions of the program, according to the expert testimony, infringes the protected expression.

Gates Rubber Co. v. Bando American, Inc., 798 F.Supp. 1499, 1511 (D.Colo.1992).

We acknowledge that unprotectable elements of a program, even if copied verbatim, cannot serve as the basis for ultimate liability for copyright infringement. However, the copying of even unprotected elements can have a probative value in determining whether the defendant copied the plaintiff's work. Where a court first extracts all unprotected elements of a work, and only compares protected elements, it deprives itself of the use of probative, and potentially essential, information on the factual issue of copying. That is because, even if a court finds protectable elements of a program to be similar, it still must determine whether those elements were copied from the plaintiff's work, whether the duplication can be attributed to other factors, or whether its reproduction was pure chance. The fact that non-protectable elements of the original program were also copied, although it cannot be the basis for liability, can be probative of whether protected elements were copied. That is because, in certain situations, it may be more likely that protected elements were copied if there is evidence of copying among the unprotected elements of the program.

[8] When a plaintiff relies on the indirect method of proving copying, he merely creates an inference that the defendant appropriated portions of the plaintiff's program. The defendant can come forward with evidence of independent creation to rebut the inference of copying created by the evidence of access and factual similarity. Summit Motor, 930 F.2d at 295. In the instant case, the district court considered evidence of independent development consisting of defendant Piderit's testimony. The court found this testimony lacked credibility and concluded that in light of the other evidence presented at the hearing that "the Defendants [] failed to rebut the presumption of copying" that arose from plaintiff's proof of access and similarity.

[9] The degree of similarity between programs necessary to give rise to the inference that copying occurred will vary from case to case. Arnstein, 154 F.2d at 469. A high degree of similarity may permit access to be inferred. See Ferguson v. National Broadcasting Co., 584 F.2d 111, 113 (5th Cir.1978); 3 Nimmer § 13.02[B], at 13-21. Conversely, where there is strong proof of access, the necessary showing of factual similarity will be relatively lower. However, we note that no matter how conclusive proof of access may be, liability may not attach without some showing of similarity.

[10] In the instant case, the district court found that the defendants had access to Gates' computer programs and that "the Chauffeur program was copied from the Design Flex program." Gates Rubber, 798 F.Supp. at 1516. The defendants do not challenge those findings on appeal, although they obviously do not agree with them. Rather, the defendant's main contention on appeal is that the district court erroneously relied on the similarity of non-protectable elements of the Gates program to assess infringement liability.

[11] As the 1976 House Report on this section noted

"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."

H.R.Rep. No. 1476, 94th Cong., 2d Sess. 57 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5670.

[12] However, we note that the appropriate test to be applied and the order in which its various components are to be applied in any particular case may vary depending on the claims involved, the procedural posture of the suit, and the nature of the computer programs at issue.

[13] For our purposes we consider each of these terms to refer generally to a method for achieving a particular result. For simplicity, we will refer only to "process."

[14] We recognize that the scenes a faire doctrine may implicate the protectability of interfacing and that this topic is very sensitive and has the potential to effect widely the law of computer copyright. This appeal does not require us to determine the scope of the scenes a faire doctrine as it relates to interfacing and accordingly we refrain from discussing the issue.

[15] A number of tests have been proposed to give guidance to courts in making this determination. They include "total concept and feel," "fundamental essence or structure," and the "iterative" tests. The "total concept and feel" test was developed in different contexts and it is not very helpful in comparing similarities among protected components of computer codes. The other tests are artificially narrow and restrictive. Instead, the comparison must necessarily be an ad hoc determination of whether the infringed portion is a significant or important part of the plaintiff's code, considered as a whole.

[16] There is no dispute in this appeal that computer programs may be protectable under the copyright law.

[17] See Altai, 982 F.2d at 705-06 (citing cases); 3 Nimmer § 13.03[F], at 13-102.17 to 13-102.19; Englund, 88 Mich.L.Rev. 881-82. The criticisms of the Whelan analysis primarily concern the high level of abstraction at which the court chose to separate idea from expression. The criticisms of the Whelan decision are valid when the opinion is read to imply that a computer program can have only one idea. See 3 Nimmer, § 13.03[F], at 13-102.17. Computer programs can, and nearly all do, incorporate more than one idea. When a program is analyzed under the Whelan framework with this broader concept of idea, the scope of protection afforded by the Whelan analysis is significantly curtailed.

[18] The court attempted to fit its analysis into the rubric of the "extrinsic-intrinsic" test. However, that effort largely overlaps the "abstraction-filtration-comparison" test we adopt today and it merely adds confusion to the existing plethora of terminology. For purposes of addressing the issue of copyright infringement of computer programs, we think it is better simply to use the terminology addressed in our opinion.

[19] We note that the court correctly found a number of the elements present in both the Design Flex and Chauffeur programs to be unprotectable. It found the formulas used in the program to have been previously published and therefore in the public domain, and the level of complexity of the program to be more akin to the idea of the program than its expression. Gates Rubber, 798 F.Supp. at 1518-19.

[20] As Gates explained in its submission to this court:

The engineering constants were derived by Gates based upon a large number of tests. The result of each test was plotted on a graph so that it could be compared with other results. Once all results had been collected, the constant was created by comparing and interpreting all results and determining which result best typified the group. The designated constant is representative of the group in the opinion of the engineer making the determination.

Aplee.Br. at 32. Gates mischaracterizes the derivation of the constants as having been "created."

[21] The district court has found that the constants were trade secrets belonging to Gates, and in Part II of this opinion we uphold that finding. Thus, the fact that Bando used these constants in its program is strong evidence on the factual issue of copying.

[22] The district court merely summarized the testimony of one of the experts who found that several elements of the programs were similar including: "data flow, which he described as being analogous to `recipe;' [and] control flow which is the sequence of events." Gates Rubber, 798 F.Supp. at 1514-15.

[23] In fact, common errors are not always probative of copying. For example, on the record before us, the testimony of the expert Dr. Dorn argued that the errors resulted from different sources in the programs.

[24] Except as stated above, we find no error in the remaining portions of the district court's analysis of Gates' copyright claim.

[25] The Colorado Uniform Trade Secrets Act provides for damages and injunctive relief for misappropriation of trade secrets. Colo.Rev.Stat. 7-74-103 and 7-74-104. Misappropriation is defined as:

(a) Acquisition of a trade secret of another by a person who knows or who has reason to know that the trade secret was acquired by improper means; or

(b) Disclosure or use of a trade secret of another without express or implied consent by a person who:

(I) Used improper means to acquire knowledge of the trade secret; or

(II) At the time of the disclosure or use, knew or had reason to know that his knowledge of the trade secret was:

(A) Derived from or through a person who had utilized improper means to acquire it;

(B) Acquired under circumstances giving rise to a duty to maintain its secrecy or limit its use; or

(C) Derived from or through a person who owed a duty to the person seeking relief to maintain its secrecy or limit its use; or

(III) Before a material change of his position, knew or had reason to know that it was a trade secret and that knowledge of it had been acquired by accident or mistake.

Colo.Rev.Stat. 7-74-102(2).

[26] In its complaint, Gates alleges that (i) Bando officials knew that they possessed trade secrets belonging to Gates and that the trade secrets were used in the development of their computer programs, (ii) that the trade secrets were used in violation of Gates' rights and as a means of unfair competition, (iii) that the trade secrets were obtained in violation of confidentiality agreements, and (iv) the use of the trade secrets constituted a misappropriation under Colorado law. Amended Complaint, Aplt. Apx at 6-8.

        O'Brien, Malevinsky & Driscoll, of New York City (Isaac R. Oeland and M. L. Malevinsky, both of New York City, of counsel), for appellant.

        Siegfried F. Hartman, of New York City (Nathan L. Miller and Siegfried F. Hartman, both of New York City, of counsel), for appellees.

[45 F.2d 120]

         Before L. HAND, SWAN, and AUGUSTUS N. HAND, Circuit Judges.

        L. HAND, Circuit Judge.

        The plaintiff is the author of a play, "Abie's Irish Rose," which it may be assumed was properly copyrighted under section five, subdivision (d), of the Copyright Act, 17 USCA § 5(d). The defendant produced publicly a motion picture play, "The Cohens and The Kellys," which the plaintiff alleges was taken from it. As we think the defendant's play too unlike the plaintiff's to be an infringement, we may assume, arguendo, that in some details the defendant used the plaintiff's play, as will subsequently appear, though we do not so decide. It therefore becomes necessary to give an outline of the two plays.

        "Abie's Irish Rose" presents a Jewish family living in prosperous circumstances in New York. The father, a widower, is in business as a merchant, in which his son and only child helps him. The boy has philandered with young women, who to his father's great disgust have always been Gentiles, for he is obsessed with a passion that his daughter-in-law shall be an orthodox Jewess. When the play opens the son, who has been courting a young Irish Catholic girl, has already married her secretly before a Protestant minister, and is concerned to soften the blow for his father, by securing a favorable impression of his bride, while concealing her faith and race. To accomplish this he introduces her to his father at his home as a Jewess, and lets it appear that he is interested in her, though he conceals the marriage. The girl somewhat reluctantly falls in with the plan; the father takes the bait, becomes infatuated with the girl, concludes that they must marry, and assumes that of course they will, if he so decides. He calls in a rabbi, and prepares for the wedding according to the Jewish rite.

        Meanwhile the girl's father, also a widower, who lives in California, and is as intense in his own religious antagonism as the Jew, has been called to New York, supposing that his daughter is to marry an Irishman and a Catholic. Accompanied by a priest, he arrives at the house at the moment when the marriage is being celebrated, but too late to prevent it, and the two fathers, each infuriated by the proposed union of his child to a heretic, fall into unseemly and grotesque antics. The priest and the rabbi become friendly, exchange trite sentiments about religion, and agree that the match is good. Apparently out of abundant caution, the priest celebrates the marriage for a third time, while the girl's father is inveigled away. The second act closes with each father, still outraged, seeking to find some way by which the union, thus trebly insured, may be dissolved.

        The last act takes place about a year later, the young couple having meanwhile been abjured by each father, and left to their own resources. They have had twins, a boy and a girl, but their fathers know no more than that a child has been born. At Christmas each, led by his craving to see his grandchild, goes separately to the young folks' home, where they encounter each other, each laden with gifts, one for a boy, the other for a girl. After some slapstick comedy, depending upon the insistence of each that he is right about the sex of the grandchild, they become reconciled when they learn the truth, and that each child is to bear the given name of a grandparent. The curtain falls as the fathers are exchanging amenities, and the Jew giving evidence of an abatement in the strictness of his orthodoxy.

        "The Cohens and The Kellys" presents two families, Jewish and Irish, living side by side in the poorer quarters of New York in a state of perpetual enmity. The wives in both cases are still living, and share in the mutual animosity, as do two small sons, and even the respective dogs. The Jews have a daughter, the Irish a son; the Jewish father is in the clothing business; the Irishman is a policeman. The children are in love with each other, and secretly marry, apparently after the play opens. The Jew, being in great financial straits, learns from a lawyer that he has fallen heir to a large fortune from a great-aunt, and moves into a great house, fitted luxuriously. Here he and his family live in vulgar ostentation, and here the Irish boy seeks out his Jewish bride, and is chased away by the angry father. The Jew then abuses the Irishman over the telephone, and both become hysterically excited. The extremity of his feelings makes the Jew sick, so that he must go to Florida for a rest, just before which the daughter discloses her marriage to her mother.

        On his return the Jew finds that his daughter has borne a child; at first he suspects the lawyer, but eventually learns the truth and is overcome with anger at such a low alliance. Meanwhile, the Irish family who have been forbidden to see the grandchild, go to the Jew's house, and after a violent scene between the two fathers in which the Jew disowns his daughter, who decides to go back with her husband, the Irishman takes her back with her baby to his own poor lodgings. [45 F.2d 121] The lawyer, who had hoped to marry the Jew's daughter, seeing his plan foiled, tells the Jew that his fortune really belongs to the Irishman, who was also related to the dead woman, but offers to conceal his knowledge, if the Jew will share the loot. This the Jew repudiates, and, leaving the astonished lawyer, walks through the rain to his enemy's house to surrender the property. He arrives in great dejection, tells the truth, and abjectly turns to leave. A reconciliation ensues, the Irishman agreeing to share with him equally. The Jew shows some interest in his grandchild, though this is at most a minor motive in the reconciliation, and the curtain falls while the two are in their cups, the Jew insisting that in the firm name for the business, which they are to carry on jointly, his name shall stand first.

        It is of course essential to any protection of literary property, whether at common-law or under the statute, that the right cannot be limited literally to the text, else a plagiarist would escape by immaterial variations. That has never been the law, but, as soon as literal appropriation ceases to be the test, the whole matter is necessarily at large, so that, as was recently well said by a distinguished judge, the decisions cannot help much in a new case. Fendler v. Morosco, 253 N. Y. 281, 292, 171 N. E. 56. When plays are concerned, the plagiarist may excise a separate scene Daly v. Webster, 56 F. 483 (C. C. A. 2); Chappell v. Fields, 210 F. 864 (C. C. A. 2); Chatterton v. Cave, L. R. 3 App. Cas. 483; or he may appropriate part of the dialogue (Warne v. Seebohm, L. R. 39 Ch. D. 73). Then the question is whether the part so taken is "substantial," and therefore not a "fair use" of the copyrighted work; it is the same question as arises in the case of any other copyrighted work. Marks v. Feist, 290 F. 959 (C. C. A. 2); Emerson v. Davies, Fed. Cas. No. 4436, 3 Story, 768, 795-797. But when the plagiarist does not take out a block in situ, but an abstract of the whole, decision is more troublesome. 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. Holmes v. Hurst, 174 U. S. 82, 86, 19 S. Ct. 606, 43 L. Ed. 904; Guthrie v. Curlett, 36 F.(2d) 694 (C. C. A. 2). Nobody has ever been able to fix that boundary, and nobody ever can. In some cases the question has been treated as though it were analogous to lifting a portion out of the copyrighted work (Rees v. Melville, MacGillivray's Copyright Cases 1911-1916, 168); but the analogy is not a good one, because, though the skeleton is a part of the body, it pervades and supports the whole. In such cases we are rather concerned with the line between expression and what is expressed. As respects plays, the controversy chiefly centers upon the characters and sequence of incident, these being the substance.

        We did not in Dymow v. Bolton, 11 F. (2d) 690, hold that a plagiarist was never liable for stealing a plot; that would have been flatly against our rulings in Dam v. Kirk La Shelle Co., 175 F. 902, 41 L. R. A. (N. S.) 1002, 20 Ann. Cas. 1173, and Stodart v. Mutual Film Co., 249 F. 513, affirming my decision in (D. C.) 249 F. 507; neither of which we meant to overrule. We found the plot of the second play was too different to infringe, because the most detailed pattern, common to both, eliminated so much from each that its content went into the public domain; and for this reason we said, "this mere subsection of a plot was not susceptible of copyright." But we do not doubt that two plays may correspond in plot closely enough for infringement. How far that correspondence must go is another matter. Nor need we hold that the same may not be true as to the characters, quite independently of the "plot" proper, though, as far as we know, such a case has never arisen. If Twelfth Night were copyrighted, it is quite possible that a second comer might so closely imitate Sir Toby Belch or Malvolio as to infringe, but it would not be enough that for one of his characters he cast a riotous knight who kept wassail to the discomfort of the household, or a vain and foppish steward who became amorous of his mistress. These would be no more than Shakespeare's "ideas" in the play, as little capable of monopoly as Einstein's Doctrine of Relativity, or Darwin's theory of the Origin of Species. It follows that the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.

        In the two plays at bar we think both as to incident and character, the defendant took no more — assuming that it took anything at all — than the law allowed. The stories are quite different. One is of a religious zealot [45 F.2d 122] who insists upon his child's marrying no one outside his faith; opposed by another who is in this respect just like him, and is his foil. Their difference in race is merely an obbligato to the main theme, religion. They sink their differences through grandparental pride and affection. In the other, zealotry is wholly absent; religion does not even appear. It is true that the parents are hostile to each other in part because they differ in race; but the marriage of their son to a Jew does not apparently offend the Irish family at all, and it exacerbates the existing animosity of the Jew, principally because he has become rich, when he learns it. They are reconciled through the honesty of the Jew and the generosity of the Irishman; the grandchild has nothing whatever to do with it. The only matter common to the two is a quarrel between a Jewish and an Irish father, the marriage of their children, the birth of grandchildren and a reconciliation.

        If the defendant took so much from the plaintiff, it may well have been because her amazing success seemed to prove that this was a subject of enduring popularity. Even so, granting that the plaintiff's play was wholly original, and assuming that novelty is not essential to a copyright, there is no monopoly in such a background. Though the plaintiff discovered the vein, she could not keep it to herself; so defined, the theme was too generalized an abstraction from what she wrote. It was only a part of her "ideas."

        Nor does she fare better as to her characters. It is indeed scarcely credible that she should not have been aware of those stock figures, the low comedy Jew and Irishman. The defendant has not taken from her more than their prototypes have contained for many decades. If so, obviously so to generalize her copyright, would allow her to cover what was not original with her. But we need not hold this as matter of fact, much as we might be justified. Even though we take it that she devised her figures out of her brain de novo, still the defendant was within its rights.

        There are but four characters common to both plays, the lovers and the fathers. The lovers are so faintly indicated as to be no more than stage properties. They are loving and fertile; that is really all that can be said of them, and anyone else is quite within his rights if he puts loving and fertile lovers in a play of his own, wherever he gets the cue. The plaintiff's Jew is quite unlike the defendant's. His obsession is his religion, on which depends such racial animosity as he has. He is affectionate, warm and patriarchal. None of these fit the defendant's Jew, who shows affection for his daughter only once, and who has none but the most superficial interest in his grandchild. He is tricky, ostentatious and vulgar, only by misfortune redeemed into honesty. Both are grotesque, extravagant and quarrelsome; both are fond of display; but these common qualities make up only a small part of their simple pictures, no more than any one might lift if he chose. The Irish fathers are even more unlike; the plaintiff's a mere symbol for religious fanaticism and patriarchal pride, scarcely a character at all. Neither quality appears in the defendant's, for while he goes to get his grandchild, it is rather out of a truculent determination not to be forbidden, than from pride in his progeny. For the rest he is only a grotesque hobbledehoy, used for low comedy of the most conventional sort, which any one might borrow, if he chanced not to know the exemplar.

        The defendant argues that the case is controlled by my decision in Fisher v. Dillingham (D. C.) 298 F. 145. Neither my brothers nor I wish to throw doubt upon the doctrine of that case, but it is not applicable here. We assume that the plaintiff's play is altogether original, even to an extent that in fact it is hard to believe. We assume further that, so far as it has been anticipated by earlier plays of which she knew nothing, that fact is immaterial. Still, as we have already said, her copyright did not cover everything that might be drawn from her play; its content went to some extent into the public domain. We have to decide how much, and while we are as aware as any one that the line, whereever it is drawn, will seem arbitrary, that is no excuse for not drawing it; it is a question such as courts must answer in nearly all cases. Whatever may be the difficulties a priori, we have no question on which side of the line this case falls. A comedy based upon conflicts between Irish and Jews, into which the marriage of their children enters, is no more susceptible of copyright than the outline of Romeo and Juliet.

        The plaintiff has prepared an elaborate analysis of the two plays, showing a "quadrangle" of the common characters, in which each is represented by the emotions which he discovers. She presents the resulting parallelism as proof of infringement, but the adjectives employed are so general as to be quite useless. Take for example the attribute of "love" ascribed to both Jews. The plaintiff has depicted her father as deeply attached [45 F.2d 123] to his son, who is his hope and joy; not so, the defendant, whose father's conduct is throughout not actuated by any affection for his daughter, and who is merely once overcome for the moment by her distress when he has violently dismissed her lover. "Anger" covers emotions aroused by quite different occasions in each case; so do "anxiety," "despondency" and "disgust." It is unnecessary to go through the catalogue for emotions are too much colored by their causes to be a test when used so broadly. This is not the proper approach to a solution; it must be more ingenuous, more like that of a spectator, who would rely upon the complex of his impressions of each character.

        We cannot approve the length of the record, which was due chiefly to the use of expert witnesses. Argument is argument whether in the box or at the bar, and its proper place is the last. The testimony of an expert upon such issues, especially his cross-examination, greatly extends the trial and contributes nothing which cannot be better heard after the evidence is all submitted. It ought not to be allowed at all; and while its admission is not a ground for reversal, it cumbers the case and tends to confusion, for the more the court is led into the intricacies of dramatic craftsmanship, the less likely it is to stand upon the firmer, if more naïve, ground of its considered impressions upon its own perusal. We hope that in this class of cases such evidence may in the future be entirely excluded, and the case confined to the actual issues; that is, whether the copyrighted work was original, and whether the defendant copied it, so far as the supposed infringement is identical.

        The defendant, "the prevailing party," was entitled to a reasonable attorney's fee (section 40 of the Copyright Act 17 USCA § 40).

        Decree affirmed.