Brief Amicus Curiae of Copyright Law Professors in Lotus Development Corp. v. Borland International, Inc.

Journal of Intellectual Property Law Volume 3 | Issue 1 Article 4 October 1995 Brief Amicus Curiae of Copyright Law Professors in Lotus Development Corp. v. Borland International, Inc. Pamela Samuelson Follow this and additional works at: https://digitalcommons.law.uga.edu/jipl Part of the Intellectual Property Law Commons Recommended Citation Pamela Samuelson, Brief Amicus Curiae of Copyright Law Professors in Lotus Development Corp. v. Borland International, Inc., 3 J. Intell. Prop. L. 103 (1995). Available at: https://digitalcommons.law.uga.edu/jipl/vol3/iss1/4 This Amicus Advocacy is brought to you for free and open access by Digital Commons @ Georgia Law. It has been accepted for inclusion in Journal of Intellectual Property Law by an authorized editor of Digital Commons @ Georgia Law. Please share how you have benefited from this access For more information, please contact . Samuelson: Brief Amicus Curiae of Copyright Law Professors in Lotus Developm AMICUS ADVOCACY BRIEF AMICUS CURIAE OF COPYRIGHT LAW PROFESSORS IN LOTUS DEVELOPMENT CORP. V. BORLAND INTERNATIONAL, INC. EDITOR'S FOREWORD The issue dealt with in this amici curiae brief is the balancing of the two Congressional mandates, set forth in 17 U.S.C. § 102(b), that must be considered when adjudicating the infringement of computer programs. This balance requires the protection of original expression, but does not permit the extension of that protection to the abstract ideas, procedures, processes, systems and methods of operation that might be contained in the computer program. The United States District Court which first heard the case of Lotus Development Corp. v. Borland International,Inc. ruled that the menu command hierarchy of Lotus 1-2-3 was protectable. The court, construing § 102(b) narrowly, decided that only the abstract elements of computer programs were excluded from the scope of copyright protection. The United States Court of Appeals for the First Circuit rejected the District Court's conclusions, finding that constituent elements of operation are not protected by § 102(b). The First Circuit, however, failed to offer any real guidance on how to distinguish the protectable expression from the unprotectable methods of operation. This brief was filed in support of the defendant-respondent before the United States Supreme Court by thirty-four professors who 103 Published by Digital Commons @ Georgia Law, 1995 1 Journal of Intellectual Property Law, Vol. 3, Iss. 1 [1995], Art. 4 104 J. INTELL. PROP. L. [Vol. 3:103 teach and write about copyright law at law schools around the country. The Supreme Court deadlocked four-four (Justice Stevens took no part in the consideration or opinion), thereby affirming the First Circuit in a January 16, 1996, per curiam opinion. This brief is of particular importance after the failure of the Supreme Court to render a decisive opinion. The issue of the copyrightability of computer programs is of tremendous importance, not only to professors and students of intellectual property law, but also to practioners and businesses. This brief offers guidance in reconciling the two conflicting Congressional mandates, aiding scholars and practitioners in understanding the proper approach to determining the copyrightability of computer programs. https://digitalcommons.law.uga.edu/jipl/vol3/iss1/4 2 Samuelson: Brief Amicus Curiae of Copyright Law Professors in Lotus Developm 1995] LOTUS DEVELOPMENT CORPORATION 105 No. 94-2003 IN THE SUPREME COURT OF THE UNITED STATES OCTOBER TERM, 1995 LOTUS DEVELOPMENT CORPORATION, Petitioner, V. BORLAND INTERNATIONAL, INC., Respondent. On Writ of Certiorari to the United States Court of Appeals for the First Circuit BRIEF AMICUS CURIAE OF COPYRIGHT LAW PROFESSORS IN SUPPORT OF RESPONDENT PAMELA SAMUELSON (Counsel of Record) CORNELL LAW SCHOOL 322 Myron Taylor Hall Ithaca, NY 14853 (607) 255-2829 Attorney for Amici Copyright Law Professors December 1995 Published by Digital Commons @ Georgia Law, 1995 3 Journal of Intellectual Property Law, Vol. 3, Iss. 1 [1995], Art. 4 J. INTELL. PROP.L. 106 [Vol. 3:103 TABLE OF CONTENTS Page TABLE OF AUTHORITIES ......................... 108 I. INTERESTS OF AMICI ......................... 113 II. SUMMARY OF ARGUMENT ..................... 116 ARGUMENT ................................. III. 117 COPYRIGHT LAW EXCLUDES NOT JUST ABSTRACT IDEAS, BUT ALSO CONSTITUENT ELEMENTS OF METHODS AND SYSTEMS, FROM THE SCOPE OF PROTECTION AVAILABLE TO ORIGINAL WORKS OF AUTHORSHIP .............................. 117 A. Section 102(b), Which Excludes Methods Of Operation As Well As Abstract Ideas From the Scope of Copyright Protection, Was Intended To Preclude Copyright Protection For Methods Embodied In 118 Computer Programs ..................... B. Under Baker v. Selden, Copyright Protection Is Unavailable To Constituent Elements of Methods and Systems Embodied In a Protected Work. . 119 C. Many Other Recent Computer Program Cases Have Applied Section 102(b) and Precedents Such As Baker v. Selden To Exclude Constituent Elements of Methods and Processes From the Scope of Copyright ................................. 121 D. The Court of Appeals Was Correct In Concluding That The "Patterns of Abstractions" Approach Is Not The Only Method Of Judging Infringement In Computer Program Cases................. 122 https://digitalcommons.law.uga.edu/jipl/vol3/iss1/4 4 Samuelson: Brief Amicus Curiae of Copyright Law Professors in Lotus Developm LOTUS DEVELOPMENT CORPORATION 19951 IV. METHODS AND PROCESSES EMBODIED IN PROGRAMS SHOULD NOT BE PROTECTED BY COPYRIGHT BECAUSE THEIR UTILITARIAN CHARACTER MAKES THEM MORE APPROPRIATE FOR REGULATION BY THE PATENT SYSTEM ....................... 125 A. Baker v. Selden Requires That Useful Methods and Systems Embodied in Copyrighted Works Should Be Protected, If At All, Only If They Meet The Standards For Patentability .................. 125 B. Authorities Concur With Baker That Courts Must Defer To Patent Law To Protect Useful Methods and Systems Depicted or Embodied in Copyrighted W orks . ........................ ...... 126 Computer Programs Embody Many Useful Methods and Systems That Should Be Protected, If At All, By The Patent System ......................... 129 The District Court Improperly Applied Copyright To Protect Useful Methods or Systems In The Lotus Program. .... ...... 130 C. D. V. CONCLUSION .......................... Published by Digital Commons @ Georgia Law, 1995 ...... 133 5 Journal of Intellectual Property Law, Vol. 3, Iss. 1 [1995], Art. 4 J. INTELL. PROP.L. [Vol. 3:103 TABLE OF AUTHORITIES Page(s) CASES Apple Computer, Inc. v. Microsoft, Inc., 35 F.3d 1435 (9th Cir. 1994), cert. denied, 115 S. Ct. 1176 (1995) .... 115 ............... Apple Computer, Inc. v. Microsoft, Inc., 799 F. Supp. 1006 (N.D. Cal. 1992) affd, 35 F.3d 1435 (9th Cir. 1994), cert. denied, 115 S. Ct. 1176 (1995) .... Ash (...truncated)