® InfoJur.ccj.ufsc.br

METHODS OF OPERATION

by Jonathan Rosenoer

I. THE OPPOSITION AWAKES

After a district court in Massachusetts held Borland International Inc. liable for infringing Lotus 1-2-3, several third-party briefs were filed in opposition to the decision in conjunction with Borland's appeal. A number of computer scientists advised the U.S. Court of Appeals for the First Circuit that if upheld, the district court's rulings "will have a catastrophic impact on the computer software industry." This group included Marvin Minsky (an MIT professor and one of the founders of artificial intelligence), John McCarthy (a Stanford University professor and developer of the Lisp programming language as well as the concept of time-sharing computer systems), and Chris Hofstader of The League for Programming Freedom, among others. Other briefs in opposition to the district court were filed by: The American Committee for Interoperable Systems (ACIS), an informal organization of companies that develop computer software and hardware products that interoperate with computer systems developed by other companies; copyright law professors from around the nation; the Software Entrepreneurs' Forum, a non-profit group (based in the Silicon Valley) of more than 1,000 independent software developers, consultants and software providers; and 18 computer user groups. It is not possible to measure the extent these arguments influenced the First Circuit, but they make clear that a wide range of persons are concerned about the direction taken by courts in their application of intellectual property laws to the computer industry. Notably, many of their arguments were endorsed in the First Circuit's recent decision reversing the district court and finding that Borland had not infringed Lotus' copyright.

II. COMPATIBILITY ATTACKED

After 3 years development, in 1987 Borland released its first Quattro program, a spreadsheet program that, according to Borland, "included enormous innovations over competing spreadsheet products." In Quattro and Quattro Pro Version 1.0, Borland placed a virtually identical copy of the entire 1-2-3 menu tree, including the words and structure of 1-2-3's menu command hierarchy. Borland, however, did not copy any of Lotus 1-2-3's underlying code. The 1-2-3 menu command hierarchy was used in Borland's products so that users familiar with 1-2-3 would be able to switch to Borland's programs without having to learn new commands or rewrite their 1-2-3 macros.

In Quattro and Quattro Pro Version 1.0, users were offered a "Lotus Emulation Interface" to allow them to interact with the Borland programs as though they were using 1-2-3, "albeit with a slightly different looking screen and with many Borland options not available on Lotus 1-2-3." According to the First Circuit,

"In effect, Borland allowed users to choose how they wanted to communicate with Borland's spreadsheet programs: either by using menu commands designed by Borland, or by using the commands and command structure used in Lotus 1-2-3 augmented by Borland-added commands."

In July 1990, Lotus Development Corp. sued Borland. The suit came four days after a district court held that 1-2-3's "'menu structure, taken as a whole -- including the choice of menu command terms [and] the structure and order of those terms,' was protected expression covered by Lotus's copyrights. __Lotus Development Corp. v. Paperback Software Int'l__, 740 F.Supp. 37, 68, 70 (D. Mass. 1990). In July 1992, the district court ruled that Lotus' menu command hierarchy is copyrightable expression because "[a] very satisfactory spreadsheet menu tree can be constructed using different commands and a different command structure from those of Lotus 1-2-3." The district court also held that Borland infringed Lotus' copyright and concluded a jury trial was needed to determine the extent of copying by Borland.

Following these rulings, Borland removed the Lotus Emulation Interface from its products. Borland's products retained partial compatibility with Lotus 1-2-3 through use of Quattro Pro's "Key Reader," which allowed Borland's programs to understand and perform some 1-2-3 macros. This meant, however, that users could no longer debug or modify macros or run most interactive macros. In response, Lotus filed a supplemental complaint alleging that Key Reader infringed its copyright. And Borland was allowed to amend its answer to raise a defense of "fair use."

The district court later held that Borland failed to show that its use of the Lotus 1-2-3 menu command hierarchy in the Emulation Interface was a fair use. The district court also held that Key Reader infringed Lotus' copyright and rejected Borland's defenses, including fair use.

III. OPERATION & COPYRIGHT

Borland appealed to the First Circuit, arguing that among other things, "the Lotus menu command hierarchy is not copyrightable because it is a system, method of operation, process, or procedure foreclosed from protection by 17 U.S.C. [Section] 102(b)." According to Borland, the outcome here was decided by the United States Supreme Court over 100 years ago, in a case over a textbook explaining a new way of to do accounting. In that case, the Supreme Court held that the copyright over the textbook did not grant a monopoly on the use of the accounting system. __Baker v. Selden__, 101 U.S. 99 (1879).

But the First Circuit did not agree that __Baker v. Selden__ is as analogous as Borland urges. Here, Lotus does not claim a copyright over its accounting system. The subject of this appeal, observed the First Circuit, is "Lotus's monopoly over the commands it uses to operate the computer." And the first question to be considered is "whether the menu command hierarchy as a whole can be copyrighted."

Section 102(b) of the Copyright Act provides that,

"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."

According to the First Circuit, the Lotus 1-2-3 menu command hierarchy is an unprotectable "method of operation." The First Circuit explains that the Lotus command hierarchy provides the means by which users control and operate Lotus 1-2-3. It "does not merely explain and present Lotus 1-2-3's functional capabilities to the user; it also serves as the method by which the program is operated and controlled."

The district court had reasoned that the Lotus menu command hierarchy constitutes an "expression" of the "idea" of operating computer program with commands arranged hierarchically into menus and submenus. Lotus made specific choices and an arrangement of command terms. Although competitors were free also to use commands employed in a hierarchy to operate their programs, the district court held they are not free to use the specific command terms and arrangement that Lotus had used.

Although there may be some expressive choices in "choosing and arranging the Lotus command terms," the First Circuit holds that such expression is not copyrightable because it is part of Lotus 1-2-3's "method of operation":

"If specific words are essential to operating something, then they are part of a 'method of operation' and, as such, are unprotectable. This is so whether they must be highlighted, typed in, or even spoken, as computer programs no doubt will soon be controlled by spoken words."

Whether the Lotus command menu could have been designed differently is "immaterial," says the First Circuit, "to the question of whether it is a 'method of operation.'" Expressive choices "do not magically change the uncopyrightable menu command hierarchy into copyrightable subject matter."

IV. VCR'S, USERS & MACROS

According to the First Circuit, the Lotus command terms are not even equivalent to the labels on the buttons of a video cassette recorder (VCR). They are, instead, "equivalent to the buttons themselves." One cannot operate a VCR without buttons and one cannot operate Lotus 1-2-3 without its menu command hierarchy.

Importantly, the First Circuit explained its position with the computer user in mind:

"Under Lotus's theory, if a user uses several different programs, he or she must learn how to perform the same operation in a different way for each program used. For example, if the user wanted the computer to print material, then the user would have to learn not just one method of operating the computer such that it prints, but many different methods. We find this absurd. The fact that there may be many different ways to operate a computer program, or even many different ways to operate a computer program using a set of hierarchically arranged command terms, does not make the actual method of operation chosen copyrightable; it still functions as a method for operating the computer and as such is uncopyrightable. ...

Under the district court's holding, if the user wrote a macro to shorten the time needed to perform a certain operation in Lotus 1-2-3, the user would be unable to use that macro to shorten the time needed to perform that same operation in another program. Rather, the user would have to rewrite his or her macro using that other program's menu command hierarchy. This is despite the fact that the macro is clearly the user's own work product. We think that forcing the user to cause the computer to perform the same operation in a different way ignores Congress's direction in [Section] 102(b) that 'methods of operation' are not copyrightable. That programs can offer users the ability to write macros in many different ways does not change the fact that, once written, the macro allows the user to perform an operation automatically."

V. ON KEYING PROCEDURES

In reversing the district court and finding that Borland did not infringe the Lotus' copyright by copying the 1-2-3 menu command hierarchy, the First Circuit noted that its decision is at odds with a decision by the Tenth Circuit in __Autoskill, Inc. v. National Educ. Support Sys., Inc.__, 994 F.2d 1476 (10th Cir.), __cert denied__, 114 S.Ct 307 (1993). In Autoskill, the court there rejected the argument that a keying procedure requiring students to respond to program inquiries by pressing the 1, 2, or 3 keys is uncopyrightable. The First Circuit remarks, "we fail to see how 'a student selecting a response by pressing the 1, 2, or 3 keys,' can be anything but an unprotectable method of operation."

CyberLaw (tm) is published solely as an educational service. The author, a California attorney, is Executive Editor of LEXIS COUNSEL CONNECT CALIFORNIA. He may be contacted at jrosen03@counsel.com or cyberlaw@cyberlaw.com. Questions and comments may be posted on America Online (go to keyword "CYBERLAW") or CyberLaw World Wide (http://www.portal.com/~cyberlaw/), made possible with support from Portal Communications Co. (ph. 408/973-9111). CyberLaw is a trademark of Jonathan Rosenoer. Copyright (c) 1995 Jonathan Rosenoer; All Rights Reserved.

http://www.cyberlaw.com/cylw0395.html