Petition — Franklin Computer Corp. v. Apple Computer, Inc.

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Office -Supreme Court, US,

83-704 FILED

OCT 28 1983

NO.

ALEXANDER L. STEVAS,

CLERK

IN THE

SUPREME COURT OF THE

UNITED STATES

October Term, 1983

FRANKLIN COMPUTER CORPORATION,

Petitioner,

APPLE COMPUTER, INC.,

Respondent.

PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF

APPEALS FOR THE THIRD CIRCUIT

BERNARD G. SEGAL*

JEROME J. SHESTACK

MICHAEL J. MANGAN

SHERRY A. SWIRSKY

VaALerte J. MUNSON

Suite 3600

1600 Market Street

Philadelphia, Pennsylvania 19103

(215) 751-2222

Attorneys for Petitioner

ScHNADER. HARRISON. SeGaL & Lewis

Of Counsel

"Attorney of Record

QUESTIONS PRESENTED

1. Does Section 102(b) of the Copyright Act — which

denies copyright protection to an original work that con-

stitutes an “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” — preclude copyrightability

for an operating system of a computer which manages the

computer's internal functions and is its method of opera-

tion?

2. Under the doctrine of Baker v. Selden, 101 U.S.

99 (1879), may one use copyright to obtain a monopoly

over a computer operating system, which system is a nec-

essary and utilitarian part of the computer, and essential

for the computer to function?

3. In copyright cases where preliminary injunctive

relief is sought, may the trial court eliminate all consid-

eration of the element of irreparable harm simply be-

cause the plaintiff has shown a prima facie case of copyright

infringement?

Pursuant to Rule 28.1, petitioner states that it is a wholly-owned

subsidiary of Franklin Technologies, Inc.

(i)

TABLE OF CONTENTS

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CONSTITUTIONAL AND STATUTORY PROVISIONS INVOLVED

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REASONS FOR GRANTING THE WRIT .................

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Tuts Case Is of CriticAL IMPORTANCE AND Has

FAR-REACHING IMPLICATIONS .................

THE Court oF ApPpEALS’ DECISION CONFLICTS WITH

AND UNDERMINES PRINCIPLES SET FORTH IN BAKER

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THE Court oF APPEALS Has CREATED CONFUSION

CONCERNING THE VITALITY OF THE IDEA/ EXPRESSION

DicHoToMy SET ForRTH IN BAKER V. SELDEN AND

CODIFIED IN THE COPYRIGHT ACT .............

THE Court oc APPEALS WRONGLY INTERPRETED

THE 1980 AMENDMENTS TO OVERRIDE SECTION

102(b) oF THE CopyrRiGHT ACT AS IT PERTAINS TO

THis Court SHOULD CLARIFY THE RELEVANCE OF

IRREPARABLE HARM IN PRELIMINARY INJUNCTION

CASES INVOLVING CLAIMS OF COPYRIGHT

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(ii)

TABLE OF CONTENTS (Continued)

APPENDIX:

Court OF APPEALS OPINION (8/30/83)

District Court OPINION (7/30/82)

District Court Orper (7/30/82) .............0-

District CourT MEMORANDUM (9/15/82)

District Court OrpeR (9/15/82) ................

Court OF APPEALS JUDGMENT (8/30/83)

Court OF APPEALS ORDER (9/23/83)

Court OF APPEALS ORDER (9/30/83)

CONSTITUTIONAL AND STATUTORY

PROVISIONS INVOLVED

(iii)

TABLE OF AUTHORITIES

Page

Cases:

Apple Computer, Inc. v. Franklin Computer Corp.,

wae e. Sue. SEL (ED. Pe. ISRL). oo ss cn cance ee

Apple Computer, Inc. v. Franklin Computer Corp.,

+O. ae tae (36 Cir. PS) os oie es: passim

Atari. Inc. v. North American Philips Consumer Elec-

tronics Corp., 672 F. 2d 607 (7th Cir.). cert. den-

ied, U.S. » Oe Se Che BO.CSSGL) votes wes 23

Baker v. Selden, 101 U.S. 99 (1879) ............... passim

Brown v. Chote, 411 U.S. 452 (1973) .............. 23

Brown Instrument Co. v. Warner, 161 F.2d 910 (D.C.

Cir..), cert. denied, 332 U.S. 801 (1947) ........... 15

Mazet v. Stem, 347 U5. 201-(1954) .. 5 ec ee 14-15

Taylor Instrument Companies v. Fawley-Brost Co., 139

F.2d 98 (7th Cir. 1943). cert. denied, 321 U.S. 785

Ege) ER ONE ara cee he POO Greeti anya act MA Mo ce 15

Wainwright Sec., Inc. v. Wall St. Transcript Corp., 558

F.2d 91 (2d Cir. 1977), cert. denied, 434 U.S. 1014

ERE a Arann Ie oe ennanerD Sg mPa eg DAL ete LAB

Williams Electronics. Inc. v. Artic International. Inc..

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CONSTITUTION, STATUTES, AND CourRT RULES:

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JUDICIAL CODE

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(iv)

IN THE

SUPREME COURT OF THE

UNITED STATES

October Term, 1983

FRANKLIN COMPUTER CORPORATION,

Petitioner,

APPLE COMPUTER, INC.,

Respondent.

PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF

APPEALS FOR THE THIRD CIRCUIT

Petitioner, Franklin Computer Corporation, re-

spectfully prays that a writ of certiorari be issued to re-

view the judgment of the United States Court of Appeals

for the Third Circuit entered on August 30, 1983.

OPINIONS BELOW

The opinion of the court of appeals (A 1) of which

review is sought is reported at 714 F.2d 1240 (3d Cir.

1983). The opinion of the district court (A 32) is reported

at 545 F. Supp. 812 (E.D. Pa. 1982).

JURISDICTION

The judgment of the court of appeals (A 65) was

entered on August 30, 1983. A timely petition for rehear-

ing was denied on September 23, 1983 (A 66), and this

petition is being filed within 90 days of that date. On

September 30, 1983, the court of appeals granted a stay

of the issuance of the certified judgment in lieu of a

formal mandate until October 30, 1983. (A 67)

The Court has jurisdiction to review the judgment

of the court of appeals under 28 U.S.C. § 1254(1).

CONSTITUTIONAL AND STATUTORY

PROVISIONS INVOLVED

This case involves the following constitutional provi-

sion and statutes. each of which is set forth in full at A

68-69:

U.S. Const. art. I. § 8. cl. 8

§ 10, 94 Stat. 3028 (1980) (Software Copyright Act of

1980)

STATEMENT OF THE CASE

This petition seeks review of a widely-reported’ de-

cision of the United States Court of Appeals for the

Third Circuit which reversed the denial of a preliminary

injunction motion and remanded the case to the district

court. 714 F.2d at 1255, A 31. In this case of first impres-

sion the circuit court determined as a matter of law that

computer operating systems are eligible for copyright pro-

tection.

The issues in this case are seemingly complex, but

come sharply into focus if one delineates at the outset the

undisputed distinction between computer operating sys-

tems and computer application programs. Computer op-

erating systems consist of routines that electronically

activate a computer and manage the various internal

housekeeping functions that a computer must perform in

order to run any application program, CR 45 at 7-8. Op-

erating systems are, in short, a computer's technological

life support system. Application programs, on the other

hand, (commonly referred to as “computer programs” or

“software”), are programs inserted into a computer which

has been made to function by virtue of its operating sys-

tems. Application programs display and make available

for computer users the thousands of available programs

1. The public focus on this case and its significance to the com-

puter industry, and high technology in general, is extraordinary. See,

e.g., N.Y. Times, Sept. 2, 1983 at Al, col. 1; Washington Post, Sept.

3, 1983 at E9, col. 1; Wall Street Journal, Sept. 2, 1983 § 1 at 2, col.

3; Associated Press, Sept. 1, 1983, A.M. cycle, Domestic News Sec-

tion; Reuters Ltd., Sept. 2, 1983, A.M. cycle, Domestic News Sec-

tion; Reuters Ltd., Sept. 2, 1983, A.M. cycle, Business News Section:

National Law Journal, Sept. 19, 1983 at 50, col. 1; N.Y. Times, Sept.

25, 1983 § 3, at 2, col. 3; Legal Times, Sept. 26, 1983 at 13, col. 1;

Information Systems News, Oct. 3, 1983, at 1, col. 1; N.Y. Times,

Oct. 23, 1983 § 3, at 8, col. 1.

covering such topics as accounting, inventory control,

spread sheets, word processing, information storage, var-

ious tests, and a myriad of games from chess to space

battles. CR 45 at 63-65. Application programs are not

involved in this case, and were not the subject of the

copyrights challenged here. Rather, the focus of this liti-

gation and the decision below is the operating systems that

enable the computer to function and which provide access

to the numerous application programs that are available

for particular computers. Without the operating systems,

the various application programs have no access to the

computer and will not function on it.

Apple is a successful California personal computer

corporation, recognized as an industry leader. 714 F.2d at

1242. A 4. Since 1976, Apple has sold more than 400,000

of its Apple II computers. A byproduct of Apple’s early

success is that there now exists a vast body of software.

i.e., thousands of computer application programs, de-

signed by independent third parties, which are compati-

ble with the Apple II operating systems. 714 F.2d at 1242,

A 4. Access to these thousands of computer application

programs for any consumer is dependent upon having a

computer that emulates Apple’s operating systems. CR

47 at 340-41; 545 F. Supp. at 814, A 37. Until recently, a

prospective user of the thousands of “Apple-compatible”

application programs had no choice but to buy the Apple

computer, since only Apple's operating systems could re-

ceive and run most of such application programs.

Franklin, a Pennsylvania corporation, was formed in

1981 to manufacture and market personal computers. CR

12 at ©€ 313-14. The founders of Franklin recognized the

need in the market for a computer with hardware and

operating systems designed so that it would be compatible

with the broad range of application programs that so far

could be run only on the Apple II computer operating

systems. Franklin's objective was not only to respond to

that market demand for a compatible computer, but also

to supply one that had enhanced capabilities. CR 47 at

340-41.

In February, 1982, Franklin entered the market with

its Ace 100 personal computer, which was capable of run-

ning all of the application programs that originally had

been written to be compatible with the Apple II operat-

ing systems, and which competed in price and features

with the Apple II computer. CR 12 at © 322.

In developing its Ace 100 computer, Franklin was

advised by legal counsel that it could utilize Apple’s op-

erating systems because those systems contained no copy-

rightable expression and were an integral part of the

computer teclinology necessary to make the computer

function. CR 47 at 342-43, 357-58. Franklin also studied

whether it would be possible to redesign the works in suit

and still produce a computer that would run Apple-com-

patible application programs. CR 46 at 247-60, 269-72;

CR 47 at 351, 364-67. Franklin concluded that redesign

was not possible without sacrificing the objective of Ap-

ple-compatibility. /d.; CR 46 at 258-60. Thus, the only

way to enter the market with a computer that could re-

ceive the thousands of application programs available to

purchasers of Apple computers was to develop a com-

puter that used the same operating systems and techno-

logical processes used in the Apple II. CR 46 at 247-60,

277€R 47 at 348-55. Apple had sought to copyright, but

not patent, such operating systems.”

Apple brought suit against Franklin on May 12, 1982,

alleging copyright infringement, patent infringement, un-

2. For purposes of the preliminary injunction motion, Apple

limited its claims to those of copyright infringement.

fair competition, and misappropriation in connection with

Franklin’s manufacture and marketing of the Ace 100.

Apple asserted that the district court had jurisdiction un-

der 28 U.S.C. § 1400(b). Franklin answered, raising af-

firmative defenses; seeking declaratory judgments that

each of the copyrights claimed by Apple is invalid, void,

unenforceable, and not infringed; and counterclaiming

that Apple has attempted to monopolize its technology,

and used the works in suit in a manner constituting anti-

competitive conduct in violation of the antitrust laws. CR

12 at 64-76.

In June, 1982, Apple moved for a preliminary in-

junction to restrain Franklin from using, copying, selling

or infringing Apple’s claimed copyrights in the works in

suit. A hearing on Apple's motion, limited to the copy-

right issues, was held from June 16, 1982 through June

18, 1982.

During the three-day hearing, Fra::klin introduced

expert testimony indicating that Apple's operating sys-

tems are “processes,” “systems” or “methods of opera-

tion,” CR 47, Ex. D-13 at 16; and that they are purely

functional and utilitarian, id. Further, the evidence intro-

duced by Franklin indicated that those operating systems

contain no copyrightable expression, CR 47 at 320, 396;

and that the operating systems merge idea with expres-

sion to such an extent that they are inseparable and indis-

tinguishable, CR 46 at 276; CR 45 at 53-54, 56, 96; CR

46 at 185-86, 210-12; CR 47. Apple’s contention was that

operating systems are copyrightable as a matter of law.

On August 2, 1982, the district court entered an or-

der denying Apple’s preliminary injunction motion on the

grounds of failure to show probability of success and fail-

ure to show irreparable harm. On August 12, 1982, Ap-

ple moved for reconsideration, and on September 15,

1982, the district court entered an order denying Apple's

motion.

Apple appealed from the order of the district court

on August 31, 1982 and oral argument on that appeal was

held on March 17, 1982. The court of appeals issued its

decision nearly six months later on August 30, 1983, de-

ciding as a matter of law that operating systems are eli-

gible for copyright protection.”

The court of appeals, in a lengthy and far-reaching

opinion by Judge Dolores K. Sloviter, addressed critical

issues of statutory and constitutional dimension,’ re-

versed the district court, and remanded the case for re-

consideration.

3. Although there are obviously factual disputes in the record,

the circuit court reversed on the basis of law, stating, “Because we

conclude that the district court proceeded under an erroneous view

of the applicable law, we reverse the denial of the preliminary in-

junction and remand.” 714 F.2d at 1242, A 3-4.

4. The opinion of the court of appeals contains much discussion

of the effect of its earlier decision in Williams Electronics, Inc. v.

Artic International, Inc., 685 F.2d 870 (3d Cir. 1982), which was

issued within days of the district court's denial of Apple's motion for

a preliminary injunction in this case. Williams involved the question

of whether a computer program expressed in object code and embed-

ded in a ROM loses copyrightability because of those traits. Those

“fixation” issues are not, however, involved here. Franklin did not

argue them before the court of appeals, and does not raise them

here. The portions of the court of appeals’ decision that are perti-

nent to this writ appear at 714 F.2d at 1249-54, A 19-28.

REASONS FOR © RANTING THE WRIT

INTRODUCTION

Even among the many important cases bidding for

this Court's attention, this case stands out as an extraor-

dinary one for the following reasons:

1. This case indisputably involves the most impor-

tant legal issues in the field of computer technology since

the very advent of the computer.” Moreover, this is a case

of first impression in which an authoritative decision by

this Court will substantially promote judicial economy,

forestalling the torrent of burdensome litigation now

brewing in every circuit in the nation.

2. This case has constitutional dimension involving

the scope of Article I, § 8, Clause 8 of the Constitution

as applied to modern computer technology.

3. This case poses the question of whether Baker v.

Selden, 101 U.S. 99 (1879), should have continued vitality

or, whether (as the court below believed) Baker is obso-

lete in the computer age, notwithstanding its constitu-

tional underpinnings and its codification in the Copyright

Act.

4. This case raises the important statutory issue of

whether the 1980 Amendments to the Copyright Act,

adding a definition of “computer program” to Section

101, override the basic concepts of Section 102(b) of the

esses,” “methods of operation” or “ideas” may not be

copyrighted.° That question is of critical importance to

5. See footnote |, supra.

6. This point overlaps conceptually with point three above.

the computer industry and other areas of high technol-

Ogy.

5. This case also highlights the continuing confusion

in ihe circuits on the question of whether irreparable

harm is to remain a relevant element in deciding prelimi-

nary injunctive relief in copyright cases, or whether that

element is to be presumed upon a prima facie showing of

Each of these factors alone would seem to warrant

the grant of certiorari. Surely, their confluence in this

case presents an extraordinary and urgent reason for this

Court's review. We recognize that this case arises from an

interlocutory appeal upon the denial of a preliminary in-

junction. However, the legal issues decided by the court

of appeals are not only the law of the case, but are the

law of the circuit according to the internal operating pro-

cedures of the Third Circuit. See Third Circuit Internal

Operating Procedures 8.13. Hence, insofar as legal issues

were decided by the court of appeals, they have a finality

that makes them appropriate for review, even apart from

the compelling factors set forth above.

Each of the reasons for granting the writ will be

briefly amplified.

I. THIS CASE IS OF CRITICAL IMPORTANCE AND

HAS FAR-REACHING IMPLICATIONS.

The courts below, the parties themselves, and lead-

ing commentators all agree that this case is of extraordi-

nary importance to the computer industry, an industry

critical to the nation’s technological pre-eminence, which

generates billions of dollars each year.’

Indeed, there can be no dispute that the future course

of the computer industry, which is at the cutting edge of

the nation’s development of high technology, will be sub-

stantially affected by whether the court of appeals’ deci-

sion is correct or incorrect. If computer operating systems

are determined to be eligible for copyright protection,

these consequences follow:

(a) First, computer manufacturers will (as Apple has

done) seek copyright rather than patent protection for

their operating systems. Copyrights are very easily and

quickly obtained and provide a 75-year monopoly. Ob-

taining a patent, however, takes much longer and the

applicant must set forth the specific claims thereof and

meet a rigorous test of novelty and non-obviousness, then

earning a monopoly limited to only 17 years. In the future

therefore, essential and lucrative elements of high tech-

nology will be converted into computer electronic circui-

try, regardless of the technological and economic

desirability of that approach, in order to achieve a longer

and broader monopoly through the easier route of copy-

right.

(b) Second, if early market entrants can capture

technologies by copyrighting elements of high technol-

7. See footnote | regarding representative public comments. In

addition, virtually every journal in the computer field has discussed

this case and a number of legal seminars have considered its impli-

cations. So too, the court below specifically noted the importance of

this case to the computer industry (714 F.2d at 1242, A 3),

ogy, such as operating systems, competition in computer

manufacturing will be discouraged. Where patents are

concerned, any manufacturer may manufacture similar

machinery, provided any specific patentable claims are

avoided; but in copyright, similarity becomes the very

basis for a claim of copyright infringement. Moreover,

potential computer manufacturers may refrain from en-

tering the market at all because if they are foreclosed

from using unpatented operating systems, they will also

be denied access to the application programs dependent

on those systems. Hence, the technological advances and

more economical machinery that come with competition

will be substantially deterred if operating systems fall within

the ambit of copyright protection.

foster the “balkanization” of software application pro-

grams. This is because each manufacturer, by being able

to monopolize operating systems, will also be able to con-

trol access to the market for application programs that

are compatible with the computer's copyrighted operating

systems. Interfacing of machines and widespread com-

patibility —both of which are technological and economic

desiderata— would be set back.

Those consequences must be contrasted with the

benefits that may be expected if it is determined that

operating systems are not eligible for copyright protec-

tion. In that event, the number of competing computer

manufacturers will increase substantially. This is because

it is widely recognized that there is insufficient novelty

and non-obviousness in most computers to justify patent

protection. Lacking patents and in the absence of copy-

right protection for operating systems, more manufactur-

ers will be able to produce computers that provide access

to the thousands of available applications programs. An

increase in the number of computer manutacturers inev-

itably advances competition, encourages technological

advances and leads to lower prices for consumers. In ad-

dition, the absence of copyright protection for operating

systems will promote their standardization, thereby offer-

ing greater access to more application programs for con-

sumers at many income levels.

Ultimately, the issue of copyrightability or non-

copyrightability of computer operating systems and the

corollary constitutional and statutory questions must be

decided by this Court. Of course. this Court could do so

later. However, the legal issues are ripe for decision now,

and the issues are urgent because they are and will be

arising again and again in many district court cases, where

the courts’ rulings will either allow particular manufactur-

ers to compete in this vital field or prevent them from

doing so, with serious consequences for the industry and

consumers.

These compelling issues of tremendous public inter-

est have not yet been considered and decided by this

Court. Unless decided by this Court, the application of

the law to high technology will remain in question, con.

tinuing the present confusion” and uncertainty and

spawning continued litigation.

Il. THE COURT OF APPEALS’ DECISION CON.

FLICTS WITH AND UNDERMINES PRINCI-

PLES SET FORTH IN BAKER vy. SELDEN.

The continued vitality of the seminal decision in Baker

v. Selden, 101 U.S. 99 (1879), is at stake here. According

to the court of appeals, Baker has little, if any, relevance

to modern computer technology. If that is to be so, it

requires enunciation by this Court.

8. See, e.g., N.Y. Times, Oct. 23. 1983, footnote 1, supra.

Baker held: (1) that use of a system does not infringe

a copyright on the description of the system, (2) that

(3) that the copyright laws may not be used to obtain and

hold a monopoly over an idea.” The Baker principles are

not common law creations, but constitutional doctrines;

they form the doctrinal underpinning of Section 102(b)

of the Copyright Act.

Baker's differentiation between the province of

Constitution’s division of their separate subject matter

into “Writings and Discoveries,” U.S. Const. art. 1, § 8,

cl. 8, and reflects the relative social costs of protecting

each. When “Writings” are protected through the grant

of copyright, only the particular expression used is pro-

tected; the idea itself remains free and open for public

use. Because use of or access to the idea remains unre-

stricted, the prerequisites for copyright protection of

expression are minimal. In contrast, “Discoveries,” the

subject of patent, are ideas themselves, or in more mod-

ern terms, technology. When a patent is granted, access

to and exploitation of the idea or technology is severely

restricted. In order to strike the delicate balance between

9. Baker involved the claimed copyright in a series of books

explaining a particular system of bookkeeping. The books contained

forms consisting of ruled lines and headings, which illustrated the

system and its use. The plaintiff contended that his copyrights gave

him the exclusive right to use the system explained in his books and

embodied in his forms. This Court rejected that argument, pointing

out that “there is a clear distinction between the book, as such, and

the art which it is intended to illustrate,” 101 U.S. at 102, and that

“necessary incidents” of the use of a system are open and free to the

use of the public, id. at 103. The Court ruled that copyright could

not be used to monopolize an idea, system or art; such a monopoly

can be secured only when a work has satisfied the far more rigorous

standards of the patent laws. /d. at 102.

the preservation of the free use of ideas and the encour-

agement of invention, those seeking a patent monopoly

must meet far more rigorous requirements, both substan-

tive and procedural, than those seeking copyright protec-

tion.

The district court plainly applied these principles to

Apple's operating systems when it doubted their copy-

rightability because they “are an essential element of the

machine, if not an essential part of the machine that

makes it work,” 545 F. Supp. at 821, A 52, and “are

manifestations and implementations of the ‘useful arts,’

as the term is understood in patent law, directed to pro-

ducing a beneficial result.” id. at 824, A 58.

The court of appeals disagreed. The court of appeals

acknowledged that a “literal construction” of Baker sup-

ported Franklin’s posi*ion that purely utilitarian works

cannot be copyrighted. However, the court disagreed with

Baker, stating, “We cannot accept the expansive reading

[of Baker] given . . . by some courts.” 714 F.2d at 1251.

A 23.

However, it is not an “expansive reading” that the

court of appeals refused to apply —but the clear language

of this Court in Baker itself prohibiting copyright protec-

tion for methods that are “necessary incidents to the art.”

101 U.S. at 103.

Recognizing perhaps that it is not the province of

courts of appeals to reverse Baker, the decision below

states that Franklin's “interpretation”'’ of Baker has been

rejected by the later case of Mazer v. Stein, 347 U.S. 201,

218 (1954). 714 F.2d at 1252, A 23. The court of appeals

10. The court of appeals did not explain how Franklin’s “literal

construction” of Baker, referred to earlier, was converted to an

“interpretation” or an “expansive reading.” See 714 F.2d at 1251-52,

A 23.

‘ana

is clearly wrong. Mazer involved statuette lamp bases and

dealt with the question of whether a work that had been

determined to be copyrightable, loses its eligibility for

court in Mazer said it did not. That case did not touch

upon the issue central to Baker of whether a utilitarian

work that is a “necessary incident” to the useful art itself

can be copyrighted in the first instance. Mazer does not

adopt the limited reading of Baker suggested by the court

of appeals. On the contrary, by stating that “a copyright

gives no exclusive right to the art disclosed,” 347 U.S. at

217, Mazer affirms the same literal reading of Baker that

Franklin urged and the court of appeals refused to fol-

low.

11. The court of appeals’ decision may also be viewed as diverg-

ing from the law in other circuits that have had occasion to apply

Baker to works that, like Apple's operating systems, are functionally

interdependent with a machine. Thus, the Seventh Circuit, citing

Baker, refused to extend copyright protection to a work so interde-

pendent with a machine that it was, in essence, part of the machine.

Taylor Instrument Companies v. Fawley-Brost Co., 139 F.2d 98, 100

(7th Cir. 1943), cert. denied, 321 U.S. 785 (1944). So too, the Dis-

trict of Columbia Circuit, in a case involving recording charts, ap-

plied the rationale of Baker and Taylor and found the works

uncopyrightable, saying:

“Both law and policy forbid monopolizing a machine except

within the comparatively narrow limits of the patent system.

. Since the machines which cooperate with the charts in suit

are useless without them, to copyright the charts would in effect

continue appellant's monopoly of its machines beyond the time

authorized by the patent law.” Brown Instrument Co. v. War-

ner, 161 F.2d 910, 911 (D.C. Cir.), cert. denied, 332 U.S. 801

(1947).

Even if the court of appeals were correct in characterizing the Taylor

and Brown decisions as “expansive” readings of Baker, 714 F.2d at

1251, A 23, for some circuits to give : an “expansive” reading to Baker

while others take a “non-expansive” view, in effect, constitutes con-

flict among circuits.

The court of appeals’ failure to follow Beker causes

considerable confusion as to the relevaiice of the case for

works such as comruter operating systems that are the

product of modern technology. What Apple seeks is to

capture a technology by copyrighting its operating system

programs, obtaining through copyright an unprecedented

monopoly for its machine, of longer duration than is per-

mitted by the patent laws and without meeting the rigor-

ous standards and procedures of the patent system.'* The

response Apple’s quest receives in the federal courts is of

obvious importance to the computer industry and to other

industries based on new technology. If the court of ap-

peals is correct and Baker no longer has vitality, then

manufacturers will readily resort to copyright to capture

monopolies over technology. That is hardly of small con-

sequence. It is imperative that this Court act now to clar-

ify the constitutionally-based distinction between

“Writings” and “Discoveries” (the province of copyright

and the province of patent. respectively) as it applics to

computer programs — a distinction not only blurred by

the court of appeals, but in effect obliterated by it. Tech-

nological advances in this nation move far too quickly and

are far too important to allow the present confusion to

remain. The Court should grant certiorari either to reaf-

firm the vitality of Baker and its teachings or to reject it.

12. Apple has not received, or even applied for, patents for any

of its operating systems involved here (CR 45 at 127), and so it is not

entitled to a monopoly over its technology.

Il. THE COURT OF APPEALS HAS CREATED

CONFUSION CONCERNING THE VITALITY

OF THE IDEA/EXPRESSION DICHOTOMY

SET FORTH IN BAKER v. SELDEN AND

CODIFIED IN THE COPYRIGHT ACT.

Section 102(b) of the Copyright Act, which codifies

the Baker doctrine that copyright law may not be used to

obtain a monopoly over an idea, mandates that a distinc-

tion be drawn between an “idea,” which is nor protectible

by copyright, and an “expression” of that idea, which

may be entitled to copyright protection.'* The dichotomy

is not easy to apply in the computer field where computer

instructions themselves become part of the machine and

often merge the idea and expression in one work. The

court of appeals might have waited for elucidation by the

court below after full development of the relevant facts

at trial. Unfortunately, the court of appeals addressed

the idea/expression dichotomy, and undertook to formu-

late a guiding standard. However, it confused rather than

clarified. The circuit court’s lack of guidance on this issue

not only poses a serious problem for its district court,

which must conduct further proceedings in this case,'* but

will also confound the many other district courts that will

be faced with applying the idea/expression dichotomy to

similar works in pending and prospective cases.

13. Section 102(b) provides: “In no case does copyright protec-

tion for an original work of authorship extend to any idea, proce-

dure, 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).

14. The court of appeals acknowledged that the district court

had made no findings as to whether the works in suit represent the

only means of expressing the ideas underlying them. 714 F.2d at

1253, A 27. The district court will be faced with that task on remand

and will look to the court of appeals’ opinion for guidance.

The court of appeals did correctly recognize that this

case involves the idea/expression “merger doctrine.” which

focuses on whether the idea underlying a work can be

expressed in a plurality of ways or whether the form of

expression is largely dictated by the underlying subject

matter so that there is only a limited number of modes of

expression. 714 F.2d at 1253, A 26-27. If the latter is true,

the idea and expression have “merged,” and the work is

not copyrightable. /d. That concept. of course, is the

progeny of the Baker doctrine and reflects the overriding

principle embodied in Section 102(b) of the Copyright

Act.

However, the court of appeals then tried to provide

guidelines for the application of the merger doctrine to

computer operating systems by stating that:

“[t]he idea which may merge with the expression,

thus making the copyright unavailable, is the idea

which is the subject of the expression.” 714 F.2d at

1253, A 27.

The court's guideline is simply a tautological statement of

the idea/expression merger doctrine. Such a tautology

will not guide the courts or the computer industry. The

court of appeals’ further statement that the idea/expres-

sion merger issue is a “metaphysical issue” (id.) only re-

veals its inability to formulate a guideline and offers no

assistance.

The court of appeals did make an elliptical statement

that seemed to denigrate compatibility as an element of

an idea because compatibility has commercial objectives.

714 F.2d at 1253, A 27. However, that observation is

illogical and ad hoc: an idea does not become a non-idea

merely because it has commercial objectives.

The error of the court of appeals’ analysis is not only

that it has chosen aphorisms and metaphysics as its own

mode of expression, but also that it has failed to provide

a meaningful definition of the idea that is to be compared

with the expression in order to resolve the issue of merger.

At the very least, the court of appeals should have pro-

vided meaningful guidelines defining the scope of the idea

that is to be compared with the expression. For example,

if the idea of Apple’s work, Autostart ROM, is viewed

as simply the starting of any computer, then obviously

there may be many possible expressions of that. If the

idea is viewed as starting a computer by use of an oper-

ating system embedded in a ROM, the possible expres-

sions of that idea are fewer. If the idea is viewed as

starting a computer that will be compatible with a great

percentage of the available application programs, then

the possible expressions of that idea may be fewer still.

If the idea is viewed as starting a computer that will be

compatible with most of the available application pro-

grams, then the possibie expressions of that idea may be

so few as to constitute a merger of idea and expression.

Of course, the process of applying the idea/expres-

sion merger doctrine is not easy, but it deserves more

than the superficial treatment that the court of appeals

was able to give it. The court of appeals’ inability to

define an idea/expression standard, and its resort to tau-

tological or metaphysical analysis will only confuse the

lower courts when they are requried to apply the idea/

expression dichotomy, especially in cases involving high

technology. This issue alone deserves this Court's aiten-

tion. The necessary guidance by this Court now will ob-

viate time-consuming, costly and error-producing litigation

that is bound to arise in the absence of a clear standard.

IV. THE COURT OF APPEALS WRONGLY INTER-

PRETED THE 1980 AMENDMENTS TO OV-

ERRIDE SECTION 102(b) OF THE COPY-

RIGHT ACT AS IT PERTAINS TO COM-

PUTER PROGRAMS.

The court of appeals has taken the bold step of uti-

lizing the general definition of “computer program” (added

by a 1980 amendment to the Copyright Act) in order to

override Section 102(b) of the Act. which excludes from

“methods of operation,” and “ideas.”'* The court of ap-

peals reasoned this way:

“Perhaps the most convincing item leading us to re-

ject Franklin’s argument [that Section 102(b) pie-

cludes copyright protection for Apple’s works] is that

the statutory definition of a computer program as a

set of instructions to be used in a computer in order

to bring about a certain result, 17 U.S.C. § 101,

makes no distinction between application programs

and operating programs.” 714 F.2d at 1252, A 24.

1S. Although we rcad the opinion as saying merely that with

respect to copyrightability under Section 102(b), there 1s no distine-

tion per se between operating systems and application programs,

some commentators have interpreted the court of appeals’ decision

as ruling that all computer programs are per se copyrightable. See,

e.g., S.Y. Times, Sept. 2. 1983. footnote 1. supra. Such a reading

would be a clear departure trom the language of Section 192(b):

would override the constitutional concerns underlying Section 102(b):

would fly in the tace of congressional intent. and would vitiate the

section. That such a reading could be given the court of appeals’

opinion underscores the contusion it has engendered and ts. in itself,

good reason for this Court to review the case upon a writ of certio-

rari

In short, because the definition of “computer pro-

gram” added by the 1980 Amendments to the Copyright

Act'® makes no distinction between operating systems and

application programs, the court of appeals draws the re-

ductionist conclusion that all computer “programs” are

copyrightable. '”

By thus giving substantive effect to the definition of

“computer program” in the Act and failing to recognize

the predominance of Section 102(b)’s limitation on copy-

rightability, the court of appeals has imbued the statutory

definition with unprecedented significance and rendered

Section 102(b) totally inapplicable in the computer con-

text.

The court of appeals has erroneously and seriously

misconceived the effect of the 1980 Amendments to the

eral definition of “computer program” to Section 101, the

Act's definitional section, and a provision pertaining to

the limitations on exclusive rights in computer programs.

See 17 U.S.C.A. § 117 (West Supp. 1983).

16. Section 101 of the Copyright Act defines a “computer pro-

gram” 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. The court of appeals further confused this issue by announc-

ing (714 F.2d at 1251. A 22) that the “medium is not the message.”

as if that adaptation of Marshall McLuhan’s aphorism were a basis

for rejecting Franklin's argument under Section 102(b). That state-

ment evinces a serious misunderstanding of Franklin’s argument that

Apple's operating systems are an essential functional element of the

machine, and therefore not copyrightable. regerdless of the form or

medium in which they are embodied. as indeed Section 102(b) spe-

cifically provides. See footnote 13. supra. In short. that “the medium

is not the Message” is one of Franklin's arguments and. another point

the court of appeals misapprehended

While Congress was generally receptive to new tech-

nology and “imagination and creativity in computer pro-

gramming” (714 F.2d at 1253-54, A 28), Congress certainly

did not, by adding “computer program” to the definition

section of the Act, intend to override Section 102(b),

reflecting as it does the balance between competing social

policies and the constitutionally-based distinction be-

tween patent and copyright.

If the 1980 amendment of the definition section had

been intended to have the far-reaching effect of amending

and altering the substantive provisions of Section 102(b),

Congress surely would have so indicated. It never did.

Indeed, when Congress drafted Section 102(b), it had in

mind the special copyright problems computer programs

can pose. The legislative history clearly indicates that

Congress intended computer programs to be copyrighta-

ble only “to the extent that they incorporate authorship

in the programmer's expression of original ideas, as dis-

tinguished from the ideas themselves,” H.R. Rep. No.

94-1476, 94th Cong., 2d Sess. 1, 54, 1976 U.S. Code

Cong. & Ad. News 5659, 5667, and that “the actual proc-

esses or methods embodied in the program are "or within

the scope of copyright law.” id. at 57, 1976 U.S. Code

Cong. & Ad. News 5670 (emphasis added). In other words,

the exclusory language of Section 102(b) was meant to

govern computer programs, just as it does all other po-

tentially copyrightable subject matter. Clearly, computer

programs were not to be exempt from the application of

102(b).

Tne error of the court of appeals’ statutory construc-

tion has serious consequences. If its novel and unwar-

ranted approach to statutory construction of the Copyright

Act is left uncorrected. it will have a profound effect on

high technology even tar beyond the computer industry.

V. THIS COURT SHOULD CLARIFY THE RELE-

VANCE OF IRREPARABLE HARM IN PRE-

LIMINARY INJUNCTION CASES INVOLVING

CLAIMS OF COPYRIGHT INFRINGEMENT.

When a preliminary injunction is sought, the party

seeking such equitable relief must demonstrate both a

likelihood of success on the merits and irreparable harm.

See Brown v. Chote, 411 U.S. 452, 456 (1973). In copy-

right cases, however, some courts have eliminated the

irreparable harm standard, holding that if a prima facie

case of copyright infringement is made, irreparable harm

will be presumed and need not be demonstrated. See Atari,

Inc. v. North American Philips Consumer Electronics

Corp., 672 F.2d 607 (7th Cir.), cert. denied, U:S. ‘

103 S. Ct. 176 (1982); Wainwright Sec., Inc. v. Wall St.

Transcript Corp., 558 F.2d 91 (2d Cir. 1977), cert. denied,

434 U.S. 1014 (1978). The court of appeals followed that

approach in this case and eliminated irreparable harm as

an independent element to be weighed by the trial court.

714 F.2d at 1254, A 28-29.

It is a curious phenomenon that some federal courts

treat injunctive relicf in copyright cases differently than

in other cases where equitable relief is sought. Yet any

basis for such favored treatment of copyright plaintiffs

has never been satisfactorily enunciated. Neither in logic

nor historic jurisprudence is there any reason to treat the

irreparable harm requirement differently in copyright cases

than in other cases. Indeed, the balaicing of irreparable

harm should be an essential element for the grant of pre-

liminary relief in any case; it functions as a safeguard to

help insure that such relief is not granted except when

exigency so requires. That holds true in copyright as well

as in other cases.

With the increasing number of copyright cases in this

communication-oriented age, it is surely time for this Court

to clarify the role that the irreparable harm requirement

is to play in copyright cases, If that equitable requirement

is to be rendered inapplicable to copyright plaintiffs, it

ought only to be after this Court's decision.

CONCLUSION

For each and all of the foregoing reasons, a writ of

certiorari should be granted.

Respectfully submitted,

BERNARD G. SEGAL"

JEROME J. SHESTACK

MICHAEL J. MANGAN

SHERRY A. SWIRSKY

VALERIE J. MUNSON

Attorneys for Petitioner,

Franklin Computer Corporation.

SCHNADER, HARRISON, SEGAL & Lewis

Suite 3600

1600 Market Street

Philadelphia, Pennsylvania 19103

(215) 751-2222

Of Counsel.

October 28, 1983

“Attorney of Record.

Appendix

UNITED STATES COURT OF APPEALS

For THE THIRD CiRcUIT

No. 82-1582

APPLE COMPUTER. INC.,

a California corporation,

Appellant

Vv.

FRANKLIN COMPUTER CORPORATION,

a Pennsylvania corporation

On APPEAL FROM THE UNITED States District Court

FOR THE EASTERN DISTRICT OF PENNSYLVANIA

(D. C. Civil No. 82-2107)

Argued March 17, 1983

Before: HUNTER, HIGGINBOTHAM and SLOVITER.

Circuit Judges

(Opinion filed August 30, 1983)

Jack E. Brown (Argued)

Eugene D. Cohen

Joseph W. Mott

Lawrence G. D. Scarborough

Brown & Bain, P.A.

222 North Central Avenue

Phoenix, AZ 85004

A2 Court of Appeals Opinion

Edwin H. Taylor

Blakely. Sokoloff, Taylor & Zatman

9601 Wilshire Boulevard

Suite 244

Beverly Hills, CA 90210

Ronald L. Panitch

Jay K. Meadway

Seidel. Gonda, Goldhammer &

Panitch, P.C.

600 Three Penn Center Plaza

Philadelphia, PA 19102

Attorneys for Appellant

Jerome J. Shestack (Argued)

Michael J. Mangan

Sherry A. Swirsky

Schnader, Harrison, Segal & Lewis

1719 Packard Building

Philadelphia. PA 19102

Manny D. Pokotilow

Barry A. Stein

Caesar, Rivise. Bernstein &

Cohen, Ltd.

21S. 12th Street

Philadelphia. PA 19107

Attorneys for Appellee

Court of Appeals Opinion A3

OPINION OF THE COURT

SLOVITER. Circuit Judge.

I. INFRODUCTION

Apple Computer, Inc. appeals from the district court's

denial of a motion to preliminarily enjoin Franklin Com-

puter Corp. from intringing the copyrights Apple holds

on fourteen computer programs.

The decision to grant or refuse to grant a preliminary

injunction is within the discretion of the district court.

See A.O. Smith Corp. v. FTC, 530 F.2d 515, 525 (3d Cir.

1976). Although the scope of our review of the action of

the district court in ruling on a motion for preliminary

injunction is narrow, reversal is warranted if the trial

court has abused its discretion or committed error in ap-

plying the law. Kennecott Corp. v. Smith, 637 F.2d 181,

187 (3d Cir. 1980). As the Second Circuit has stated

recently, “Despite oft repeated statements that the issu-

ance of a preliminary injunction rests in the discretion of

the trial judge whose decisions will be reversed only for

‘abuse’, a court of appeals must reverse if the district

court has proceeded on the basis of an erroneous view of

the applicable law.” Donovan v. Bierwirth, 680 F.2d 263,

269 (2d Cir.), cert. denied, 103 S.Ct. 488 (1982).

In this case the district court denied the preliminary

injunction, inter alia, because it had “some doubt as to the

copyrightability of the programs.” Apple Computer, Inc.

v. Franklin Computer Corp., 545 F. Supp. 812, 812 (E.D.

Pa. 1982). This legal ruling is fundamental to all future

proceedings in this action and, as the parties and amici

curiae seem to agree, has considerable significance to the

computer services industry.' Because we conclude that

1. Four amicus curiae briefs have been submitted; briefs from

Digital Research Inc.. Microsoft Corp.. and Association of Data

Processing Service Organizations, Inc. (a trade association for the

computer services industry), support the position of Apple, and a

brief from Pro-log Corp. supports at least part of Franklin's posi-

tion,

A4 Court of Appeals Opinion

the district court proceeded under an erroneous view of

the applicable law, we reverse the denial of the prelimi-

nary injunction and remand.

i. FACTS AND PROCEDURAL HISTORY

Apple. one of the computer industry leaders, manu-

factures and markets personal computers (microcomput-

ers). related peripheral equipment such as disk drives

(peripherals), and computer programs (software). It

presently manufactures Apple I] computers and dis-

tributes over 150 programs. Apple has sold over 400,000

Apple II computers, employs approximately 3,000 peo-

ple. and had annual sales of $335,000,000 for fiscal year

1981. One of the byproducts of Apple’s success is the

independent development by third parties of numerous

computer programs which are designed to run on the Ap-

ple I] computer.

Franklin. the defendant below, manufactures and sells

the ACE 100 personal computer and at the time of the

hearing employed about 75 people and had sold tewer

than 1.000 computers. The ACE 100 was designed to be

“Apple compatible.” so that peripheral equipment and

software developed for use with the Apple II computer

could be used in conjunction with the ACE 100. Frank-

lin’s copying of Apple's operating system computer pro-

grams in an effort to achieve such compatibility precipitated

this suit.

Like all computers both the Apple Il and ACE 100

have a central processing unit (CPU) which is the inte-

grated circuit that executes programs. In lay terms, the

CPU does the work it is instructed to do. Those instruc-

tions are contained on computer programs.

Court of Appeals Opinion AS

There are three levels of computer language in which

computer programs may be written.” High level lan-

guage, such as the commonly used BASIC or FOR-

TRAN, uses English words and symbols, and is relatively

easy to learn and understand (e.g.. "GO TO 40” tells the

computer to skip intervening steps and go to the step at

line 40). A somewhat lower level language is assembly

language. which consists of alphanumeric labels (e.g..

“ADC” means “add with carry”). Statements in high level

language. and apparently also statements in assembly lan-

guage. are referred to as written in “source code.” The

third. or lowest level computer language, is machine lan-

guage. a binary language using two symbols, 0 and 1, to

indicate an open or closed switch (e.g., “OLLOLOO1L” means,

to the Apple. add two numbers and save the results).

Statements in machine language are referred to as written

in “object code.”

The CPU can only follow instructions written in ob-

ject code. However. programs are usually written in source

code which is more intelligible to humans. Programs writ-

ten in source code can be converted or translated by a

“compiler” program into object code for use by the com-

puter. Programs are generally distributed only in their

object code version stored on a memory device.

A computer program can be stored or fixed on a

‘ariety of memory devices, two of which are of particular

relevance for this case. The ROM (Read Only Memory)

is an internal permanent memory device consisting of a

semi-conductor “chip” which is incorporated into the cir-

cuitry of the computer. A program in object code is

embedded on a ROM before it is incorporated in the

computer. Information stored on a ROM can only be

2. Useful nontechnical descriptions of computer operations ap-

pear in Note. Copyrig/it Protection for Computer Programs In Read

Only Memory Chips, 11 Hofstra L. Rev. 329 (1982). and Note,

L. Rev. 1723 (1983).

A6 Court of Appeals Opinion

read, not erased or rewritten.’ The ACE 100 apparently

contains EPROMS (Erasable Programmable Read Only

Memory) on which the stored information can be erased

and the chip reprogrammed, but the district court found

that for purposes of this proceeding, the difference be-

tween ROMs and EPROMs is inconsequential. 545 F.

Supp. at 813 n.3. The other device used for storing the

programs at issue is a diskette or * floppy disk”, an auxil-

iary memory device consisting of a flexible magnetic disk

resembling a phonograph record, which can be inserted

into the computer and from which data or instructions

can be read.

Computer programs can be categorized by function

as either application programs or operating system pro-

grams. Application programs usually perform a specific

task for the computer user. such as word processing,

checkbook balancing, or playing a game. In contrast, op-

erating system programs generally manage the internal

functions of the computer or facilitate use of application

programs. The parties agree that the fourteen computer

programs at issue in this suit are operating system pro-

grams."

3. In contrast to the permanent memory devices a RAM (Ran-

dom Access Memory) is a chip on which volatile internal memory ts

stored which is erased when the computer's power is turned off.

4. The fourteen programs at issue, briefly described, are:

(1) Autostart ROM is sold as part of the Apple Computer

and is embedded on a ROM chip. The program has also been

published in source code as part of a copyrighted book, the

Apple Il manual. When the computer's power is turned on,

Autostart ROM pertorms internal routines that turn on the

circuits in the computer and make its physical parts (e.g. input/

output devices, screen, and memory) ready for use.

(2) Applesoft is Apple's version of the Beginner's All-pur-

pose Symbolic Instruction Code (BASIC) language. The pro-

gram is stored in ROM and is sold as part of the computer.

Applesoft translates instructions written in the higher-level BA-

SIC language into the lower-level machine code that the com-

puter understands.

Court of Appeals Opinion A7

Apple filed suit in the United States District Court

for the Eastern District of Pennsylvania pursuant to 28

U.S.C. $1338 on May 12. $982, alleging that Franklin was

liable for copyright infringement of the fourteen com-

puter programs, patent infringement, unfair competition,

4. (Cont'd)

(3) Floating-Point BASIC is the same program as Apple-

soft but is stored on disks rather than on ROMs. It is used in

earlier versions of the Apple Il computer that did not have the

Applesoft program :n ROM.

(4) Apple Integer BASIC, another translator program, is

stored on the DOS 3.3 Master Disk. This program used Apple's

first version of BASIC for the Apple Il computer. It implements

a simpler version of the Applesoft program.

(5) DOS 3.3, the disk operating system pregram, provides

the instructions necessary to control the operation between the

disk system (disk drive) and the computer itself. It controls the

reading and writing functions of the disks and includes other

routines which put all the data transfers in sequence. The DOS

3.3 Master Disk is sold separately from the computer, and in-

cludes several of the other operating programs referred to in this

note.

(6) Master Create is stored on a disk. When a disk is pre-

pared for use the DOS 3.3 program is placed on that disk in a

form that is dependent on the amount of Random Access Mem-

ory (RAM) available. The Master Create program replaces the

DOS 3.3 on the disk with a version that is independent of the

amount of RAM available.

(7) Copy, which is stored on a disk, enables the user to copy

programs written in Apple Integer BASIC from one disk to

another.

(8) Copy A, also stored on a disk, enables the user to copy

programs written in Applesoft from one disk to another.

(9) Copy OBJO contains a file of subroutines used by the

Copy and Copy A programs.

(10) Chain, another disk stored program, allows data to be

passed between different parts of a program when only one part

of the program is in RAM at a given time. Thus, Chain pre-

serves data already stored in RAM while another part of the

program is being loaded into RAM.

As Court of Appeals Opinion

and misappropriation. Franklin’s answer in respect to the

programs contained no copyrightable subject matter.

Franklin counterclaimed for declaratory judgment that

the copyright registrations were invalid and unenforce-

able. and sought affirmative relief on the basis of Apple's

alleged misuse. Franklin also moved to dismiss eleven of

the fourteen copyright infringement counts on the ground

that Apple fviled to comply with the procedural require-

ments for suit under 17 U.S.C. $8410. 411.

After expedited discovery, Apple moved for a pre-

liminary injunction to restrain Franklin from using, copy-

4. (Contd)

(11) Hello, also disk stored. is the first program executed

after the power is turned on and a disk is ready for use. It

determines how much RAM is in the computer and which ver-

sion of BASIC needs to be loaded into the computer.

(12) Boot 13 is stored on disk and sold on a Master Disk.

It allows the user having a disk controller card that contains the

Apple 16-Sector Boot ROM to use older versions of the Apple

disk operating system.

(13) Apple 13-Sector Boot ROM is stored in a ROM lo-

cated on the disk controller card plugged into the Mother Board.

By turning on numerous circuits on the card and in the Apple II

computer, this program causes other parts of the disk operating

system used for 13-Sector format disks to load.

(14) Apple 16-Sector Boot ROM, stored in a ROM located

on the disk controller card. turns on numerous circuits on the

card and in the Apple Il computer and causes other parts of the

disk operating system used for 16-Sector format disks to load. It

therefore enables the user to start or permit the running of

another program or to prepare the computer to receive a pro-

gram.

The above descriptions represent an effort to translate the language

used by computer experts into language reasonably intelligible to lay

persons. They differ in some respects from the descriptions in the

district court’s opinion, 545 F. Supp. at 815-16, which were taken

from the complaint.

Court of Appeals Opinion AY

ing. selling. or infringing Apple's copyrights. The district

court held a three day evidentiary hearing limited to the

at the hearing in the form of affidavits and testimony that

programs sold by Franklin in conjunction with its ACE

100 computer were virtually identical with those covered

by the fourteen Apple copyrights. The variations that did

exist Were minor, consisting merely of such things as dele-

tion of reference to Apple or its copyright notice.” James

Huston, an Apple systems programmer, concluded that

the Franklin programs were “unquestionably copied from

Apple and could not have been independently created.”

He reached this conclusion not only because it is “almost

impossible for so many lines of code” to be identically

written, but also because his name, which he had embed-

ded in one program (Master Create), and the word “Ap-

plesott™. which was embedded in another (DOS 3.3).

appeared on the Franklin master disk. Apple estimated

the “works in suit” took 46 man-montis to produce at a

cost of over $740,000. not including the time or cost of

creating or acquiring earlier versions of the programs or

the expense of marketing the programs.

Franklin did not dispute that it copied the Apple

programs. Its witness admitted copying each of the works

in suit from the Apple programs. Its factual defense was

directed to its contention that it was not feasible for

Franklin to write its own operating system programs. David

McWherter, now Franklin's vice-president of engineer-

ing. testified he spent 30-40 hours in November 1981

making a study to determine if it was feasible for Franklin

to write its own Autostart ROM program and concluded

5. For example, 8 bytes of memory were altered in the Auto-

start ROM program so that when the computer is turned on “ACE

100” appears on the screen rather than “Apple II.” The Franklin

DOS 3.3 program also had 16 bytes (out of 9000) that allowed use

of upper and lower case.

Al0 Court of Appeals Opinion

it Was not because “there were just too many entry points

in relationship to the number of instructions in the pro-

gram.” Entry points at specific locations in the program

can be used by programmers to mesh their application

programs with the operating system program. Mc-

Wherter concluded that use of the identical signals was

necessary in order to ensure 100% compatibility with ap-

plication programs created to run on the Apple computer.

He admitted that he never attempted to rewrite Autostart

ROM and conceded that some of the works in suit (/.e.

Copy. Copy A, Master Create. and Hello) probably could

have been rewritten by Franklin. Franklin made no at-

tempt to rewrite any of the programs prior to the lawsuit

except for Copy, although McWherter testified that

Franklin was “in the process of redesigning” some of the

Apple programs and that “|wJe had a fair degree of cer-

tainty that that would probably work.” Apple introduced

evidence that Franklin could have rewritten programs,

including the Autostart ROM program, and that there

are in existence Operating programs written by third par-

ties which are compatible with Apple II.

Franklin's principal defense at the preliminary in-

junction hearing and betore us is primarily a legal one,

directed to its contention that the Apple operating system

programs are not capable of copyright protection,

The district court denied the motion for preliminary

injunction by order and opinion dated July 30, 1982. Ap-

ple moved for reconsideration in light of this court’s de-

cision in Williams Electronics, Inc. v. Artic International,

Inc., 685 F.2d 870 (3d Cir. 1982), which was decided Au-

gust 2, 1982, three days after the district court decision.

The district court denied the motion for reconsideration.

We have jurisdiction of Apple’s appeal pursuant to 28

U.S.C. §1292(a)(1).

Court of Appeals Opinion All

iil. THE DISTRICT COURT OPINION

In its opinion, the district court referred to the four

factors to be considered on request for a preliminary in-

junction: a reasonable probability of success on the mer-

its: irreparable injury: the improbability of harm to other

interested persons: and the public interest. 545 F. Supp.

at 825: see Delaware River Port Authority v. Transamer-

ican Trailer Transport, Inc., 501 F.2d 917, 919-20 (3d Cir.

1974). The court stated it based its denial of the motion

on the first two factors. The court held Apple had not

made the requisite showing of likelihood of success on

the merits because it “concluded that there is some doubt

as to the copyrightability of the programs described in

this litigation.” 545 F. Supp. at 812. It also stated that

“Apple is better suited to withstand whatever injury it

might sustain during litigation than is Franklin to with-

stand the effects of a preliminary injunction” because an

injunction would have a “devastating effect” on Frank-

lin’s business. id. at 825, apparently concluding on that

basis that Apple had failed to show irreparable harm.

It is difficult to discern precisely why the district court

questioned the copyrightability of the programs at issue

since there is no finding. statement, or holding on which

we can focus which clearly sets forth the district court's

view. Throughout the opinion the district court referred

to the “complexity of the question presented by the pres-

ent case”, 545 F. Supp. at 824. and the “baffling” problem

at issue. /d. at 822.

The opinion expresses a series of generalized con-

cerns which may have led the court to its ultimate conclu-

sion, and which the parties and amici treat as holdings.

The district court referred to the requirement under the

17 U.S.C. §102(a), and seems to have found that there

was a Sufficient “modicum of creativity” to satisfy the

statutory requirement of an “original work”. 545 F. Supp.

Al2 Court of Appeals Opinion

at 820-21. The court was less clear as to whether the

creation of a computer program by a programmer satis-

fied the requirement of “works of authorship”, id., and

whether an operating system program in “binary code or

one represented either in a ROM or by micro-switches”

was an “expression” which could be copyrighted as distin-

guished from an “idea” which could not be. /d. at 821.

Again, although we cannot point to a specific hold-

ing. running throughout the district court opinion is the

suggestion that programs in object code and ROMs may

not be copyrightable. Thus, for example. in a series of

discursive footnotes, the district court stated that it found

“persuasive” a district court opinion “holding that object

code in ROM is not copyright protected”, 545 F. Supp.

at 818 n.8 (referring to Data Cash Systems, Inc. v. JS&A

Group, Inc., 480 F. Supp. 1063 (N.D. Ill. 1979), aff'd on

other grounds, 628 F.2d 1038 (7th Cir. 1980)): described

an opinion reaching a contrary conclusion as containing

“rather terse analysis [which] provides“ittle guidance”,

545 F. Supp. at 818 n.8 (referring to GCA Corp. v. Chance,

217 U.S.P.Q. 718 (N.D. Cal. 1982), which followed the

reasoning of Tandy Corp. v. Personal Micro Computers,

Inc., 524 F. Supp. 171 (N.D. Cal. 1981)); and stated that

“Congressional intent regarding the copyrightability of

object codes and ROMs is not clear”, 545 F. Supp. at 819

n.9, and that even among members of the industry it was

not clear that the copyright law protects works “like those

in suit that are ROM-based,” id. at 819 n.10.

We read the district court opinion as presenting the

following legal issues: (1) whether copyright can exist in

a computer program expressed in object code, (2) whether

a ROM. (3) whether copyright can exist in an operating

system program, and (4) whether independent irrepara-

ble harm must be shown for a preliminary injunction in

Court of Appeals Opinion Al3

IV. DISCUSSION

A. Copyrightability of a Computer Program

Expressed in Object Code

Certain statements by the district court suggest that

programs expressed in object code. as distinguished from

source code, may not be the proper subject of copyright.

We find no basis in the statute for any such concern.

Furthermore. our decision in Williams Electronics, Inc.

v. Artic International, Inc., supra, laid to rest many of the

doubts expressed by the district court.

In 1976, after considerable study, Congress enacted

a new copyright law to replace that which had governed

since 1909. Act of October 19, 1976, Pub. L. No. 94-553.

YO Stat. 2541 (codified at 17 U.S.C. $8101 et seqg.). Under

the law, two primary requirements must be satisfied in

order for a work to constitute copyrightable subject mat-

ter — it must be an “original wor[{k] of authorship” and

must be “fixed in [a] tangible medium of expression.” 17

U.S.C. §102(a). The statute provides:

(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 di-

rectly or with the aid of a machine or device.

Id. The statute enumerates seven categories under “works

of authorship” including “literary works”, defined as

follows:

“Literary works” are works, other than audio-

visual 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.

Al4 Court of Appeals Opinion

17 U.S.C. S101. A work is “fixed” in a tangible medium

of expression when:

its embodiment in a copy or phonorecord, by or un-

der the authority of the author, is sufficiently per-

manent or stable to permit it to be perceived,

reproduced, or otherwise communicated for a period

of more than transitory duration. A work consisting

of sounds. images. or both, that are being transmit-

ted. Is “fixed” tor purposes of this title if a fixation

of the work is being made simultaneously with its

transmission,

ld.

Although section 102(a) does not expressly list com-

puter programs as works of authorship, the legislative

history suggests that programs were considered copy-

rightable as literary works. See H.R. Rep. No. 1476, 94th

Cong., 2d Sess. 54, reprinted in 1976 U.S. Code Cong.

& Ad. News 5659, 5667 (“ ‘literary works’. . . includes

. computer programs”). Because a Commission on

New Technological Uses (*CONTU”) had been created

by Congress to study, inter alia, computer uses of copy-

righted works, Pub. L. No. 93-573, $201, 88 Stat. 1873

(1974), Congress enacted a status quo provision, section

117, in the 1976 Act concerning such computer uses pend-

ing the CONTU report and recommendations.”

The CONTU Final Report recommended that the

that computer programs, to the extent that they embody

an author’s original creation, are proper subject matter

of copyright.” National Commission on New Technoldg-

6 Section 117 apphed only to the scope of protection to be

accorded copyrighted works when used im conjunction with a com-

puter and not to the copyrightalnlity of programs. H.R. Rep. No

1476, at 116. reprinted in 1976 0S. Code Cong. & Ad. News at

$73]

Court of Appeals Opinion Al5

ical Uses of Copyrighted Works, Final Report 1 (1979)

[hereinafter CONTU Report]. CONTU recommended

two changes relevant here: that section 117, the status

quo provision, be repealed and replaced with a section

limiting exclusive rights in computer programs so as “to

ensure that rightful possessors of copies of computer pro-

grams may use or adapt these copies for their use.” /d.;

and that a definition of computer program be added to

section 101. /d. at 12. Congress adopted both changes.

Act of Dec. 12. 1980. Pub. L. No. 96-517, $10, 94 Stat.

3015, 3028. The revisions embodied CONTU’s recom-

mendations to clarify the law of copyright of computer

software. H.R. Rep. No. 1307, 96th Cong., 2d Sess. 23,

reprinted in 1Y80 U.S. Code Cong. & Ad. News 6460,

6482.

The 1980 amendments added a definition of a com-

puter program:

A “computer program” ts a set of statements or

instructions to be used directly or indirectly in a com-

puter in order to bring about a certain result.

17 U.S.C. S101. The amendments also substituted a new

section 117 which provides that “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” when necessary to “the utiliza-

tion of the computer program” or “for archival purposes

only.” 17 U.S.C. $117. The parties agree that this section

is not implicated in the instant lawsuit. The language of

the provision, however, by carving out an exception to

the normal proscriptions against copying. clearly indi-

cates that programs are copyrightable and are otherwise

afforded copyright protection.

We considered the issue of copyright protection for

a computer program in Williams Electronics, Inc., v. Artic

International, Inc., and concluded that “the copyright-

ability of computer programs is firmly established after

Al6 Court of Appeals Opinion

the 1980 amendment to the Copyright Act.” 685 F.2d at

S75. At issue in Williams were not only two audiovisual

copyrights to the “attract” and “play” modes of a video

game. but also the computer program which was ex-

pressed in object code embodied in ROM and which con-

trolled the sights and sounds of the game. Defendant

there had argued “that when the issue is the copyright on

a computer program, a distinction must be drawn be-

tween the ‘source code’ version of a computer program,

which. . . can be afforded copyright protection, and the

‘object code’ stage. which . . . cannot be so protected,”

an argument we rejected. /d. at 876.

The district court here questioned whether copyright

was to be limited to works “designed to be ‘read’ by a

human reader [as distinguished from] read by an expert

with a microscope and patience”. 545 F. Supp. at 821.

The suggestion that copyrightability depends on a com-

municative function to individuals stems from the early

decision of White-Smith Music Publishing Co. v. Apollo

Co., 209 U.S. 1 (1908). which held a piano roll was not a

copy of the musical composition because it was not in a

form others, except perhaps for a very expert few, could

perceive. See | Nimmer on Copyright §2.03[B][1] (1983).

However, it is clear from the language of the 1976 Act

and its legislative history that it was intended to obliterate

distinctions engendered by White-Smith. H.R. Rep. No.

1476, supra, at 52, reprinted in 1976 U.S. Code Cong. &

Ad. News at 5665.

Under the statute, copyright extends to works in any

tangible means of expression “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) (emphasis added). Further, the definition of

“computer program” adopted by Congress in the 1980

amendments is “sets 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 (emphasis added).

Court of Appeals Opinion Al?

As source code instructions must be translated into object

code before the coniputer can act upon them, only in-

structions expressed in object code can be used “directly”

by the computer. See Midway Manufacturing Co. v. Stro-

hon, No. 82 C 1305, slip op. at 25-26 (N.D. Ill. June 1,

1983). This definition was adopted following the CONTU

Report in which the majority clearly took the position

that object codes are proper subjects of copyright. See

CONTU Report at 21. The majority's conclusion was

reached although confronted by a dissent based upon the

theory that the “machine-control phase” of a program ts

not directed at a human audience. See CONTU Report

at 28-30 (dissent of Commissioner Hersey).

The defendent in Williams had also argued that a

copyrightable work “must be intelligible to human beings

and must be intended as a medium of communication to

human beings.” id. at 876-77. We reiterate the statement

we made in Williams when we rejected that argument:

“(t]he answer to defendant's contention is in the words of

the statute itself.” 685 F.2d at 877.

The district court also expressed uncertainty as to

whether a computer program in object code could be

classified as a “literary work.” However, the category of

“literary works”, one of the seven copyrightable cate-

gories, is not confined to literature in the nature of Hem-

ingway’s For Whom the Bell Tolls. The definition of

“literary works” in section 101 includes expression not

7. The district court stated that a programmer working directly

in object code appears to think more as a mathematician or engineer,

that the process of constructing a chip is less a work of authorship

than the product of engineering knowledge, and that it may be more

apt to describe an encoded ROM as a pictorial three-dimensional

object than as a literary work. 545 F. Supp. at 821-22. The district

court's remarks relied in part on a quotation about “microcode”, see

id. at 821 n.14; Apple introduced testimony that none of the works

in suit contain “microcode.” Moreover, Apple does not seek to pro-

tect the ROM’ architecture but only the program encoded upon it.

Als Court of Appeals Opinion

only in words but also “numbers, or other. . . numerical

symbols or indicia”, thereby expanding the common usage

of “literary works.” Cf. Harcourt, Brace & World, Inc.

v. Graphic Controls Corp., 329 F. Supp. 517, 523-24

(S.D.N.Y. 1971) (the symbols designating questions or

response spaces on exam answer sheets held to be copy-

rightable “writings” under 1909 Act): Reiss v. National

Quotation Bureau, Inc., 276 F. 717 (S.D.N.Y. 1921) (code

book of coined words designed for cable use copyright-

able). Thus a computer program, whether in object code

or source code, is a “literary work” and is protected from

unauthorized copying, whether from its object or source

code version. Accord Midway Mfg. Co. v. Strohon, slip

op. at 25-27; see also GCA Corp. v. Chance, 217 U.S.P.Q.

at 719-20.

B. Copyrightability of a Computer Program

Embedded on a ROM

Just as the district court's suggestion of a distinction

between source code and object code was rejected by our

opinion in Williams issued three days after the district

court opinion, so also was its suggestion that embodiment

of a computer program on a ROM, as distinguished from

in a traditional writing, detracts from its copyrightability.

In Williams we rejected the argument that “a computer

program is not infringed when the program is loaded into

electronic memory devices (ROMs) and used to control

the activity of machines.” 685 F.2d at 876. Defendant

there had argued that there can be no copyright protec-

tion for the ROMs because they are utilitarian objects or

machine parts. We held that the statutory requirement of

“fixation”, the manner in which the issue arises, is satis-

fied through the embodiment of the expression in the

ROM devices. /d. at 874, 876; see also Midway Mfg. Co.

v. Strohon, slip op. at 27-30; Tandy Corp. v. Personai

Micro Computers, Inc., 524 F. Supp. at 173; cf. Stern

Electronics, Inc. v. Kaufman, 669 F.2d 852, 855-56 (2d

Court of Appeals Opinion Al9

Cir. 1982) (audiovisual display of video game “fixed” in

ROM). Therefore we reaffirm that a computer program

in object code embedded in a ROM chip is an appropri-

ate subject of copyright. See also Note, Copyright Protec-

tion of Computer Program Object Code, 96 Harv. L.

Rev. 1723 (1983): Note, Copyright Protection for Com-

puter Programs in Read Only Memory Chips, 11 Hofstra

L. Rev. 329 (1982).

C. Copyrightability of Computer Operating

System Programs

We turn to the heart of Frankiin’s position on appeal

which is that computer operating system programs, as

distinguished from application programs, are not the proper

subject of copyright “regardless of the language or me-

dium in which they are fixed.” Brief of Appellee at 15

(emphasis deleted). Apple suggests that this issue too is

foreclosed by our Williams decision because some portion

of the program at éssue there was in effect an operating

system program. Franklin is correct that this was not an

issue raised by the parties in Williams and it was not

considered by the court. Thus we consider it as a matter

of first impression.

Franklin contends that operating system programs

are per se excluded from copyright protection under the

express terms of section 102(b) of the Copyright Act,

and under the precedent and underlying principles of Baker

v. Selden, 101 U.S. 99 (1879). These separate grounds

have substantial analytic overlap.

In Baker v. Selden, plaintiff's testator held a copy-

right on a book explaining a bookkeeping system which

included blank forms with ruled lines and headings de-

signed for use with that system. Plaintiff sued for copy-

right infringement on the basis of defendant's publication

of a book containing a different arrangement of the col-

umns and different headings, but which used a similar

A20 Court of Appeals Opinion

plan so far as results were concerned. The Court, in re-

versing the decree for the plaintiff, concluded that blank

account-books were not the subject of copyright and that

“the mere copyright of Selden’s book did not confer upon

him the exclusive right to make and use account-books,

ruled and arranged as designated by him and described

and illustrated in said book.” /d. at 107. The Court stated

that copyright of the books did not give the plaintiff the

exclusive right to use the system explained in the books,

noting, for example, that “copyright of a work on math-

ematical science cannot give to the author an exclusive

rigiit to the methods of operation which he propounds.”

Id. at 103.

Franklin reads Baker v. Selden as “stand{ing] for sev-

eral fundamental principles, each presenting . . . an in-

superable obstacle to the copyrightability of Apple's

operating systems.” It states:

First, Baker teaches that use of a system itself does

not infringe a copyright on the description of the

system. Second, Baker enunciates the rule that copy-

right does not extend to purely utilitarian works. Fi-

nally, Baker emphasizes that the copyright laws may

not be used to obtain and hold a monopoly over an

idea. In so doing, Baker highlights the principal dif-

ference between the copyright and patent laws — a

difference that is highly pertinent in this case.

Brief of Appellee at 22.

Section 102(b) of the Copyright Act, the other ground

on which Franklin relies, appeared first in the 1976 ver-

sion, long after the decision in Baker v. Selden. It pro-

vides:

In no case does copyright protection for an original

work of authorship extend to any idea, procedure,

process, system, method of operation, concept, prin-

ciple, or discovery, regardless of the form in which it

is described, explained, illustrated, or embodied in

such work.

Court of Appeals Opinion A2l

It is apparent that section 102(b) codifies a substantial

part of the holding and dictum of Baker +. Selden. See |

Nimmer on Copyright §2.18{[D], at 2-207.

We turn to consider the two principal points of

Franklin’s argument.

1. “Process”, “System” or “Method of Operation”

Franklin argues that an operating system program is

either a “process”, “system”, or “method of operation”

and hence uncopyrightable.” Franklin correctly notes that

underlying section 102(b) and many of the statements for

which Baker ». Selden is cited is the digtinction which

must be made between property subject to the patent law,

which protects discoveries, and that subject to copyright

law, which protect the writings describing such discover-

ies. However, Franklin’s argument misapplies that dis-

tinction in this case. Apple does not seek to copyright the

method which instructs the computer to perform its op-

erating functions but only the instructions themselves.

The method would be protected, if at all, by the patent

law, an issue as yet unresolved. See Diamond v. Diehr,

450 U.S. 175 (1981).

Franklin’s attack on operating system programs as

“methods” or “processes” seems inconsistent with its

concession that application programs are an appropriate

subject of copyright. Both types of programs instruct the

8. We are unpersuaded by Franklin's initial contention that Ap-

ple is bound to this position because some of Apple's witnesses in the

preliminary injunction hearing used these terms in describing the

works in suit. As the CONTU Report itself recognized, the distine-

tion between copyrightable computer programs and uncopyrightable

processes or methods of operation does not always seem to “shimmer

with claritv.” CONTU Report at 18. The witnesses undoubtedly had

the not uncommon difficulty of finding the precisely correct words of

description in this field. It would be both unreasonable and arbitrary

to consider the statements of nonhiwyer witnesses without experi-

ence in using statutory language as words of art to be binding admis-

sions against Apple

A22 Court of Appeals Opinion

computer to do something. Therefore, it should make no

difference for purposes of section 102(b) whether these

instructions tell the computer to help prepare an income

tax return (the task of an application program) or to

translate a high level language program from source code

into its binary language object code form (the task of an

operating system program such as “Applesoft’, see note 4

supra). Since it is only the instructions which are pro-

tected, a “process” is no more involved because the in-

structions in an operating system program may be used to

activate the operation of the computer than it would be

if instructions were written in ordinary English in a man-

ual whi.) cescribed the necessary steps to activate an

intricate vomplicated machine. There is, therefore, no

reason to afford any less copyright protection to the in-

structions in an operating system program than to the

instructions in an application program.

Franklin’s argument, receptively treated by the dis-

trict court, that an operating system program is part of a

machine mistakenly focuses on the physical characteris-

tics of the instructions. But the medium is not the mes-

sage. We have already considered and rejected aspects of

this contention in the discussion of object code and ROM.

The mere fact that the operating system program may be

etched on a ROM does not make the program either a

machine, part of a machine or its equivalent. Further-

more, as one of Franklin's witnesses testified, an operat-

ing system does not have to be permanently in the machine

in ROM, but it may be on some other medium. such as

diskette or magnetic tape, where it could be readily trans-

ferred into the temporary memory space of the com-

puter. In fact, some of the operating systems at issue were

on diskette. As the CONTU majority stated,

Programs should no more be considered machine parts

than videotapes should be considered parts of pro-

jectors or phonorecords parts of sound reproduction

Court of Appeals Opinion A23

equipment. .. . That the words of a program are

used ultimately in the implementation of a process

should in no way affect their copyrightability.

CONTU Report at 21.

Franklin also argues that the operating systems can-

not be copyrighted because they arc “purely utilitarian

works” and that Apple is seeking to block the use of the

art embodied in its operating systems. This argument stems

from the following dictum in Baker v. Selden:

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 illus-

trate the book, or such as are similar to them, such

methods and diagrams are to be considered as nec-

essary incidents to the art, and given therewith to

the puolic; not given for the purpose of publication

in other works explanatory of the art, but for the

purpose of practical application.

10; U.S. at 103. We cannot accept the expansive reading

given to this language by some courts, see, e.g... Taylor

Instrument Companies v. Fawley-Brost Co., 139 F.2d 98

(7th Cir. 1943), cert. denied, 321 U.S. 785 (1944). In this

respect we agree with the views expressed by Professor

Nimmer in his treatise. See | Nimmer on Copyright

§2.18/C].

Although a literal construction of this language could

support Franklin’s reading that precludes copyrightability

if the copyright work is put to a utilitarian use, that inter-

pretation has been rejected by a later Supreme Court

decision. In Mazer v. Stein, 347 US. 201, 218 (1954), the

A24 Court of Appeals Opinion

Court stated: “We find nothing in the copyright statute to

support the argument that the intended use or use in

industry of an article eligible for copyright bars or invali-

dates its registration. We do not read such a limitation

into the copyright law.” /d. at 218. The CONTU majority

also rejected the expansive view some courts have given

Baker v. Selden, and stated, “That the words of a pro-

gram are used ultimately in the implementation of a proc-

ess should in no way affect their copyrightability.” /d. at

21. It referred to “copyright practice past and present,

which recognized copyright protection for a work of au-

thorship regardless ‘of the uses to which it may be put.”

Id. The Commission continued: “The copyright status of

the written rules tor a game or a system for the operation

of a machine is unaffected by the fact that those rules

direct the actions of those who play the game or carry out

the process.” Id. (emphasis added). As we previously noted,

we can consider the CONTU Report as accepted by

Congress since Congress wrote into the law the majority’s

recommendations almosi verbatim. See 18 Cong. Rec.

H10767 (daily ed. Nov. | 7, 1980) (Rep. Kastenmeier: Bill

“eliminates confusion about the legal status of computer

software by enacting the recommendations of [CONTU]

clarifying the law of copyright of computer software”);

18 Cong. Rec. $14766 (daily ed. Nov. 20. 1980) (Sen.

Bayh: “[t]his language reflects that proposed by

[CONTU"}).

Perhaps the most convincing item leading us to reject

Franklin's argument is that the statutory definition of a

computer program as a set of instructions to be used in a

computer in order to bring about a certain result, 17 U.S.C.

$101, makes no distinction between application programs

and operating programs. Franklin can point to no deci-

sion which adopts the distinction it seeks to make. In the

one other reported case to have considered it, Apple

Computer, Inc. v. Formula International, Inc., 562 F. Supp.

775 (C.D. Cal. 1983). the court reached the same conclu-

Court of Appeals Opinion A25

sion which we do, /.e. that an operating system program

is not per se precluded from copyright. It stated, “There

is nothing in any of the statutory terms which suggest a

different result for different types of computer programs

based upon the function they serve within the machine.”

Id. at 780, Other courts have also upheld the copyright-

ability of operating programs without discussion of this

issue. See Tandy Corp. v. Personal Micro Computers,

Inc., 524 F. Supp. at 173 (input-output routine stored in

ROM which translated input into machine language in a

similar fashion as Applesoft and Apple Integer Basic

proper subject of coypright): GCA Corp. v. Chance, 217

U.S.P.Q. at 719-20 (object code version of registered source

code version of operating programs is the same work and

protected).

2. Idea Expression Dichotomy

Franklin’s other challenge to copyright of operating

system programs relies on the line which is drawn be-

tween ideas and their expression. Baker v. Selden remains

a benchmark in the law of copyright for the reading given

itin Mazer v. Stein, supra, where the Court stated, “Un-

like a patent, a copyright gives no exclusive right to the

art disclosed: protection is given only to the expression

of the idea — not the idea itself.” 347 U.S. at 217 (foot-

note omitted).

The expression idea dichotomy is now expressly rec-

ognized in section 102(b) which precludes copyright for

“any idea.” This provision was not intended to enlarge or

contract the scope of copyright protection but “to restate

. that the basic dichotomy between expression and

idea remains unchanged.” H.R. Rep. No. 1476, supra, at

57, reprinted in 1976 U.S. Code Cong. & Ad. News at

5670. The legislative history indicates that section 102(b)

was intended “to make clear that the expression adopted

by the programmer is the copyrightable element in a com-

puter program, and that the actual processes or methods

A26 Court of Appeals Opinion

embodied in the program are not within the scope of the

Many of the courts which have sought to draw the

line between an idea and expression have found difficulty

in articulating where it falls. See, e.g, Nichols v. Universal

Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930) (L. Hand,

J.); see discussion in 3 Nimmer on Copyright §13.03{A].

We believe that in the context before us, a program for

an Operating system, the line must be a pragmatic one,

which also keeps in consideration “the preservation of

the balance between competition and protection reflected

in the patent and copyright laws”. Herbert Rosenthal Jew-

elry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971).

As we stated in Franklin Mint Corp. v. National Wildlife

Art Exchange, Inc., 575 F.2d 62, 64 (3d Cir.), cert. de-

nied, 439 U.S. 880 (1978), “Unlike a patent, a copyright

protects originality rather than novelty or invention.” In

that opinion, we quoted approvingly the following pas-

sage from Dymow v. Bolton, 11 F.2d 690, 691 (2d Cir.

1926):

Just as a patent affords protection only to the

means of reducing an inventive idea to practice, so

the copyright law protects the means of expressing

an idea; and it is as near the whole truth as generali-

zation can usually reach that, if the same idea can be

expressed in a plurality of totally different manners, a

plurality of copyrights may result, and no infringe-

ment will exist.

(emphasis added).

We adopt the suggestion in the above language and

thus focus on whether the idea is capable of various modes

of expression. If other programs can be written or cre-

ated which perform the same function as an Apple’s op-

erating system program, then that program is an expression

of the idea and hence copyrightable. In essence, this in-

quiry is no different than that made to determine whether

Court of Appeals Opinion A27

the expression and idea have merged, which has been

stated to occur where there are no or few other ways of

expressing a particular idea. See, e.g., Morrissey v. Proc-

ter & Gamble Co., 379 F.2d 675, 678-79 (Ist Cir. 1967):

Freedman v. Grolier Enterprises, Inc., 179 U.S.P.Q. 476,

478 (S.D.N.Y. 1973) (“[clopyright protection will not be

given to a form of expression necessarily dictated by the

underlying subject matter”): CONTU Report at 20.

The district court made no findings as to whether

some or all of Apple’s operating programs represent the

only means of expression of the idea underlying them.

Although there seems to be a concession by Franklin that

at least some of the programs can be rewritten, we do not

believe that the record on that issue is so clear that it can

be decided at the appellate level. Therefore, if the issue

is pressed on remand, the necessary finding can be made

at that time.

Franklin claims that whether or not the programs can

be rewritten, there are a limited “number of ways to

arrange operating systems to enable a computer to run

the vast body of Apple-compatible software”, Brief of

Appellee at 20. This claim has no pertinence to either the

idea expression dichotomy or merger. The idea which may

merge with the expression, thus making the copyright

unavailable, is the idea which is the subject of the expres-

sion. The idea of one of the operating system programs

is, for example, how to translaie source code into object

code. If other methods of expressing that idea are not

foreclosed as a practical matter, then there is no merger.

Franklin may wish to achieve total compatibility with in-

dependently developed application programs written for

the Apple II, but that is a commercial and competitive

objective which does not enter into the somewhat meta-

physical issue of whether particular ideas and expressions

have merged.

In summary, Franklin’s contentions that operating

system programs are per se not copyrightable is unpersua-

A28 Court of Appeals Opinion

sive. The other courts before whom this issue has been

raised have rejected the distinction. Neither the CONTU

majority nor Congress made a distinction between oper-

ating and application programs. We believe that the 1980

amendments reflect Congress’ receptivity to new technol-

ogy and its desire to encourage, through the copyright

laws, continued imagination and creativity in computer

programming. Since we believe that the district court’s

decision on the preliminary injunction was, to a large

part, influenced by an erroneous view of the availability

of copyright for operating system programs and unneces-

sary concerns about object code and ROMs, we must

reverse the denial of the preliminary injunction and re-

mand for reconsideration.

D. irreparable Harm

The district court, without any extended discussion,

found that Apple had not made the requisite showing of

irreparable harm, stating “Apple is better suited to with-

stand whatever injury it might sustain during litigation

than is Franklin to withstand the effects of a preliminary

injunction.” 545 F. Supp. at 812, 825. In so ruling. the

district court failed to consider the prevailing view that a

showing of a prima facie case of copyright infringement

or reasonable likelihood of success on the merits raises a

presumption of irreparable harm. See, e.g., Atari, Inc. v.

North American Philips Consumer Electronics Corp., 672

F.2d 607, 620 (7th Cir.). cert. denied, 103 S.Ct. 176 (1982):

Wainwright Securities Inc. v. Wall Street Transcript Corp.,

558 F.2d 91, 94 (2d Cir. 1977), cert. denied, 434 U.S.

1014 (1978): Klitzner Industries, Inc. v. H.K. James &

Co., 535 F. Supp. 1249, 1259 (E.D. Pa. 1982): Custom

Decor, Inc. v. Nautical Crafts Inc., 502 F. Supp. 154, 157

(E.D. Pa. 1980). A copyright plaintiff who makes out a

prima facie case of infringement is entitled to a prelimi-

nary injunction without a detailed showing of irreparable

Court of Appeals Opinion A29

harm. See 3 Nimmer on Copyright $14.06[A], at 14-50,

14-51 & n.16 (collecting authorities).

The CONTU Final Report recognized that “[t]he

cost of developing computer programs is far greater than

the cost of their duplication.” CONTU Report at II.

Apple introduced substantial evidence of the considera-

ble time and money it had invested in the development

of the computer programs in suit. Thus even without the

presumption of irreparable harm generally applied in

vestment and competitive position caused by Franklin's

wholesale copying of many of its key operating programs

would satisfy the requirement of irreparable harm needed

to support a preliminary injunction. See Atari, Inc. v.

North American Philips Consumer Electronics Corp., 672

F.2d at 620: Custom Decor, Inc. v. Nautical Crafts Inc.,

502 F. Supp. 154. 157 (E.D. Tenn. 1980): Herbert Rosen-

thal Jewelry Corp. v. Zale Corp., 323 F. Supp. 1234. 1238

(S.D. N.Y. 1971).

In Kontes Glass Co. v. Lab Glass, Inc., 373 F.2d

319, 320-21 (3d Cir. 1967), this court appeared to adopt

an inverse relationship approach to the irreparable harm

issue, Suggesting that the strength of the required show-

ing of irreparable injury varies inversely with the strength

of plaintiff's showing of a likelihood of success on the

merits. See Midway Mfg. Co. v. Bandai-America, Inc.,

546 F. Supp. 125, 141-42 (D.N.J. 1982). In Kontes, we

were not presented with a case in which copyrighted ma-

terial central to the essence of plaintiff's operations was

concededly copied, as we are here. We believe the Kontes

approach is best suited to those cases where the injury

from copying can be fairly considered minimal, limited or

conjectural. In those circumstances it provides flexibility

in applying the equitable remedy of preliminary injunc-

tions through evaluation of the irreparable harm factor.

Normally, however, the public interest underlying the

A30 Court of Appeals Opinion

as long as there is. as here, adequate evidence of the

expenditure of significant time. effort and money directed

to the production of the copyrighted material. Other-

wise. the rationale for protecting copyright, that of en-

couraging creativity. would be undermined. As Judge

Broderick stated in Alitzner Industries, Inc. v. H.K. James

& Co., 535 F. Supp. at 1259-60:

Since Congress has elected to grant certain exclusive

rights to the owner of a copyright in a protected

work, it is virtually axiomatic that the public interest

can only be served by upholding copyright protec-

tions and, correspondingly. preventing the misappro-

priation of the skills, creative energies, and resources

which are invested in the protected work.

Nor can we accept the district court’s explanation

which stressed the “devastating effect” of a preliminary

injunction on Franklin’s business. If that were the correct

standard, then a knowing infringer would be permitted to

construct its business around its infringement, a result we

cannot condone. See Atari, Inc. v. North American Phil-

ips Consumer Electronics Corp., 672 F.2d at 620; cf. He-

lene Curtis Industries, Inc. v. Church & Dwight Co., 560

F.2d 1325, 1333 (7th Cir. 1977) (trademark infringe-

ment), cert. denied, 434 U.S. 1070 (1978). The size of the

infringer should not be determinative of the copyright

holder's ability to get prompt judicial redress.

E. Additional Issues

Franklin has raised a number of issues concerning

Apple’s compliance with various statutory formalities such

as registration, notice and deposit. It has challenged, in a

pending motion to dismiss, the copyrights of the eleven

works in suit which were deposited in object code format,

and which were registered under the Copyright Office’s

Court of Appeals Opinion A3l

“rule of doubt.’ Franklin challenges three programs, i.e.

Apple Integer Basic. Autostart ROM and DOS 3.3, on

the ground that they or their predecessors were published

without the requisite notice. We do not reach these issues

on appeal nor do we consider Franklin’s claim that Ap-

ple’s misuse of its copyrights bars their enforcement. The

district court did not consider these claims in denying the

motion for preliminary injunction. There are no factual

findings with regard to them. On remand, they can be

considered by the district court in the first instance who

can also decide the extent to which they are relevant, if

at all, to a preliminary injunction,

Vv.

For the reasons set forth in this opinion, we will

reverse the denial of the preliminary injunction and re-

mand to the district court for further proceedings in ac-

cordance herewith.

A True Copy:

Teste:

Clerk of the United States Court of Appeals

for the Third Circuit

9. Apparently the Register of Copyrights utilizes its rule of

doubt when the deposit of a computer program is made in object

code form because its examiners cannot interpret such code to deter-

mine if there has been copyrightable authorship.

A32 District Court Decision and Order

IN THE UNITED STATES DISTRICT COURT

FOR THE

EASTERN DISTRICT OF PENNSYLVANIA

CIVIL ACTION

No. 82-2107

APPLE COMPUTER, INC.

VS,

FRANKLIN COMPUTER CORP.

NEWCOMER, J. July 30, 1982

Plaintiff Apple Computer, Inc., (“Apple”) moves for

a preliminary injunction restraining defendant Franklin

Computer Corp. (“Franklin”) from using, copying, sell-

ing, or infringing in any other way Apple's registered

copyrights on fourteen computer programs that are con-

tained in or sold with the Apple II personal computer.

I. THE PARTIES

Apple is a California corporation, acknowledged to

be a leader in the field of personal computers. It employs

approximately 3,000 people and it has sold almost 400,000

computers. Apple had sales of $335,000,000 last fiscal

year. Franklin is a Pennsylvania corporation, formed in

1981, with 75 employees. It has sold fewer than 1,000

computers.

For reasons more fully expressed below I have con-

cluded that there is some doubt as to the copyrightability

of the programs described in this litigation. Because of

this doubt, I find that plaintiff has failed to show a rea-

sonable probability of success on the merits and for that

reason, as well as a failure to show irreparable harm, |

must deny the motion.

District Court Decision and Order A33

Il. THE WORKS

A. The “Computers”

The two machines in this case are the Apple II, made

by Apple Computer Inc., and the Ace 100, made by

Franklin Computer Corporation. Both are generally re-

ferred to as microcomputers or personal computers be-

cause of their size and their ease of use by individuals

and small businesses.

Both computers contain a large flat circuit board,

called a “mother board”. Mounted on this board, forming

the electronic circuitry which is the operating center of

the computer, are a number of small integrated circuits

or chips. These integrated circuits are described herein

and are the focus of this lawsuit.

B. The Integrated Circuits; CPU, RAMs,

ROMs, PROMs and EPROMs

Personal computers contain a variety of integrated

circuits, which are photo-chemically imprinted silicon

chips.' Each integrated circuit, or chip, is constructed

with a specific size memory or programming capacity. In

microcomputers, the capacity of a chip may range from

4,000 bytes (4K of memory) to 64,000 bytes (64k of mem-

ory). One “byte” is one cell or one location point for

information to be stored in the chip. In turn, on com-

puters like Apple and Ace, each byte has eight “bits”

(Binary digIT) each of which specifies the single value of

“0” or “1”, negative or positive.

Like all computers, both Apple and Ace have a cen-

tral processing unit (“CPU”) which is the specialized in-

tegrated circuit that executes binary programs. The CPU

1. The integrated circuit inscribed on a chip is an electro-me-

chanical pattern that determines a sequence of electrical events that

occur within a chip only when the chip is performing. See D. Fink,

Computers and the Human Mind 131-177 (1966).

A34 District Court Decision and Order

does the primary calculations required of all programs

and shifts answers to other parts of the system depending

upon the requirements of the program controlling it. On

both Apple and Ace, the CPU uses a 6502 microproces-

sor chip which has a 64K storage capacity.

In addition to the CPU, which does the calculations,

computers have internal memories that hold information

generated within the computer or entered into the com-

puter from an external source like a floppy disk or key-

board. The information may be stored in a permanent or

impermanent (“volatile”) form of memory. Some chips

store information only as long as the machine is on; these

are Random Access Memory chips (RAMs). When the

power is turned off, the information stored in these chips

is lost.

The information to be stored permanently is held in

other chips called Read Only Memory (ROMs). Infor-

mation stored in ROMs is not lost when the power is

turned off. Information is stored ina ROM by destroying

the fusible links that make up the structure of each byte,

creating the equivalent of on-and-off switches arranged

according to the specifications of the program to be im-

printed in the ROM.”

For all practical purposes, the information stored in

a ROM cannot be changed by the user of a computer. As

the name suggests, the ROM contains information that

can only be read. Nothing new can be added or ‘“’written”

2. To program a ROM, program-designers use object- micro-

code. This code is binary (base 2): “On/Off”; “Yes/No”; “1/0. The

code can represent and control the pulse of electrical current. “The

presence of such a pulse at a particular time represents the bit 1; the

absence of a pulse at that time represents the bit 0." D. Fink, Com-

puters and the Human Mind 135. The topography of the chip can be

said to be an electro-mechanical version of the subject code since it

is an array of open or closed switches at which the pulse is present or

absent.

District Court Decision and Order A35

onto it. Of the 14 “works in suit.” four of them are stored

on ROMs.°*

C. Programs: Software, Interpreters, and Languages

Of signal difficulty in this case is the elasticity of the

word “program.” A computer program is a set of serial

instructions that directs the computer to perform certain

tasks. A user does not instruct the operating center of

the machine. The user writes programs that are expressed

in “high level” languages resembling English. Depending

on the circumstances, one or more special machine “pro-

grams” will in turn translate or “interpret” those instruc-

tions, given by the user, into a form of instruction that

can be executed in the circuitry. At the level of the cir-

cuitry, programs are expressed in “low level” languages.

At the very lowest level, every program is eventually

reduced to “an object code,” which is expressed in binary

(base 2) numbers, a series of zeros and ones that repre-

sent open and closed switches within the computer's cir-

cuits.

Object code is the heart of this case. In a crude way,

object code that has been etched onto the ROM architec-

ture can be “read” by an expert with a microscope and

patience. However, the object code in either its binary

form or in the silicon chip form is not designed to be read

by humans. It is the machine's language.

At issue in this case are fourteen “programs” ex-

pressed in object code. These programs are either im-

printed on the Apple’s ROMs or the Ace’s EPROM or

they are enscribed on floppy disks which allow for easy,

3. There has been testimony that the ACE 100 contain EPROMs

(Erasable Programmable Read Only Memory) rather than ROMs,

but for purposes of this proceeding, the difference is inconsequential.

EPROMs perform the same function as ROMs, but the information

stored in them can be erased and the chip can be reprogrammed,

whereas ROMs are manufactured with a fixed program.

A36 District Court Decision and Order

storage and transmission to the computer’s RAMs when

the programs are needed.

All of these programs are “operating” programs as

opposed to “application” programs. The distinction is based

on the breadth of use and the function of the program.

An application program has a specific task, ordinarily

chosen by the user, such as to maintain records, perform

certain calculations, or display graphic images. Applica-

tion programs are normaily written in high level lan-

guages which are designed to be easily used by the

unsophisticated. An operating program, by contrast, is

generally internal to the computer and is designed only

to facilitate the operating of the application program.

D. Compatability and Operating Systems

An operating system that consists of a variety of

separate Operating programs is in a sense a part of the

machine; it provides the functioning system that allows

the user to progress in an orderly fashion as he moves

through the physical process of keying information into a

computer. The operating system instructs the machine

how to use this information and receives the solutions to

the problems posed. Once in the machine, either perma-

nently implanted as a ROM or entered from a floppy

disk, an operating system is very nearly “transparent”;

the user is not aware of the work and order of the work

it is processing.

Because of the complex relationship between the

physical elements of a computer (keyboard, screen, printer,

disk drives, etc.) and the logic of the system that is both

built into the CPU and added through high level lan-

guages, operating systems are critical to personal com-

puters. Without them, every operation would require an

impractical number of steps before it could be executed.

The operating system is configured to satisfy the re-

quirements of the physical environment of the computer,

especially the structure of the CPU, and to provide easy

District Court Decision and Order A37

compatibility with software written in the general market

place and with peripherals made by other manufacturers.

The present litigation occurs because the Apple computer

has stimulated the creation of an extraordinary amount

of software and peripheral hardware that is only compat-

ible with Apple. Most of this software and peripheral

hardware was designed with Apple's operating system in

mind, which means it will not work, except with great

difficulty or restructuring, on machines other than those

with the particular configuration of operating system and

CPU that is found in the Apple.

Amateurs and small businessmen who buy small

computers, like Apple, but it not tor its quality, although

quality is not unimportant, but for the software and pe-

ripherals that are compatible with it. Franklin has “de-

signed” a computer that is Apple-compatible. Essentially

that means that the Ace was designed to run most, if not

all, of the software written for Apple by hundreds of

entrepreneurs and to accept the peripherals manufac-

tured by many others. Apple contends in this suit that

Franklin has “stolen” the logic and structure of their sys-

tem. Franklin contends that Apple has deprived non-Ap-

ple owners of the opportunity to take advantage of the

wealth of Apple-compatible material that exists in the

market place. Franklin’s argument is that it has created

not an Apple-compatible system but rather a system com-

patible with Apple-compatible software which must of

necessity share a great deal of the essential structure of

Apple, especially of the structure of Apple’s operating

system.

E. The Works in Suit

The works upon which this action is based are in

object code, stored in Read Only Memory (ROM) or on

floppy disks.

A38 District Court Decision and Order

(1) Autostart ROM

The Autostart program, stored in ROM, is a

collection of low-level subroutines (“booting” routines)

that initiate registers and other circuitry in the Apple II

when the power is turned on. It also performs a variety

of hardware-oriented functions during operating, so that

the machine can accept keystrokes and generate charac-

ter graphics for video display.

(2) Applesoft

The Applesott program is Apple’s version of

BASIC (“Beginner’s All-purpose Symbolic Instruction

Code”), a higher level programming language that was

originally developed at Dartmouth College. The Apple-

soft program is stored in ROM and is an interpreter pro-

gram that processes BASIC statements, one statement at

a time, and causes the computer to execute those instruc-

tions that implement the BASIC statement entered by

the user.

(3) DOS, 3.3

The DOS 3.3 program is a disk-based, operating

systems program. It provides the instructions necessary

to control the operation between disk drive and the com-

puter. It controls the reading and writing of the floppy

disks and includes several other routines and subroutines,

for example, the read-write-track-sector (“RWTS”) which

puts in sequence all the data transfers. RWTS starts var-

ious subprograms that perform certain low level functions

such as reading and writing data.

(4) Floating Point BASIC

Floating Point BASIC is a disk-based version of

the Applesoft program. In some modes of the Apple II

computer it is loaded into the random-access memory

(RAM) of a peripheral card, known as “Language Card,”

and is there available for the user’s programming. Float-

ing Point BASIC is used in earlier versions of the Apple

District Court Decision and Order A39

I] computer that do not have the Applesoft program in

ROM.

(5) Apple Integer BASIC

The Apple Integer BASIC is a disk-based pro-

gram and was Apple’s first version of BASIC for the

Apple II computer. This programm implements a simpler

version of Apple’s Applesoft and Floating Point BASIC

programs.

(6) Hello

The Hello program is a disk-based, operating

systems program that is used in conjunction with Apple's

DOS 3.3 operating system. After start-up, this program

is the first program executed cach time a floppy disk is

“booted up.” It determines how much Random Access

Memory (RAM) is in the computer and which version of

BASIC needs to be loaded into the computer.

(7) Chain

The Chain program is a disk-based operating

systems program that is used in conjunction with Apple's

DOS 3.3 program. The Chain program allows data to be

passed between program segments, only one of which is

in RAM at any given time. The Chain program preserves

RAM-based data during the time another program seg-

ment is being loaded into RAM.

(8) Copy

The Copy program is a disk-based operating

systems program that is used in conjunction with Apple's

DOS 3.3 program. The Copy program is a utility pro-

gram that enables the user to copy programs written in

Apple Integer BASIC from one disk to another.

(9) Copy A

The Copy A program is a disk-based operating

systems program that is used in conjunction with Apple’s

A40 District Court Decision and Order

DOS 3.3 program. The Copy A program is a utility pro-

gram that enables the user to copy programs written in

Applesoft from one disk to another.

(10) Copy OBJO

The Copy OBJO program contains a file of sub-

routines used by the Copy and Copy A programs.

(11) Boot 13

The Boot 13 is a disk-based boot program that

allows a user to “boot” older versions of the Apple disk

operating system when the user has a 16 sector boot ROM

on the Controller Card.

(12) MasterCreate

The MasterCreate program is a disk-based, op-

erating systems program. When a floppy disk is first ini-

tialized, or formatted, the DOS 3.3 is placed on the disk

in a form that is dependent on the amount of RAM avail-

able. The MasterCreate program replaces the DOS 3.3

on the disk with a version that is independent of the

amount of RAM available.

(13) Apple 13 — Sector Boot ROM

The Apple 13 — Sector Boot program is in a

ROM located on the Disk Controller Card. This boot

program initializes numerous circuits in the Controller

Card and in the Apple II computer and causes other parts

of the disk operating system used for 13 sector formatted

disks to load.

(14) Apple 16— Sector Boot ROM

The Apple 16 — Sector Boot program is in a

ROM located on the Disk Controller Card. This pro-

gram initializes numerous circuits on the Controller Card

and in the Apple II computer and causes other parts of

the disk operating system used for !6 sector formatted

disks to load.

District Court Decision and Order A4l

Hl. COPYRIGHT LAW

A. The Source of Congressional Power

Congress takes its power in the area of copyright

from Art. I, Sec. 8, cl. 8, of the Constitution (“To pro-

mote 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 . . .”).

From the start, Congress has divided the protection given

to authors and inventors, established different criteria for

protection, and provided different periods of protection.

Alfred Bell & Co. v. Catalda Fine Arts, 191 F.2d 99, 100-

101 (1951).

The division between the scope of copyright protec-

tion and patent protection has been recognized in Section

102 of the 1976 Copyright Law (hereinafter “the Act”).

17 U.S.C. $102. Section 102(a) restates, with new flexi-

bility, what has been the traditional area covered by

works of authorship* 17 U.S.C. §$102(a). Section 102(b),

taken together with the Act's definitions, excludes those

areas which, if they are to be protected, may be only

through patent law. *35 U.S.C. 81. ef seq.

4. 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 au-

thorship include the following categories

(1) literary works

I7 U.S.C. $1024)

§. Pictorial, graptie, and sculptural works shall include

works of artistic craftsmanship insofar as ther form but not their

mechanical or utilitarian aspects are concerned, the design of a

useful article shall be considered a pictorial, graphic, or

sculptural work only it jits] features can be identified

separately from, a {| are capable of existing independently of,

the utilitarian aspects of the article

A42 District Court Decision and Order

The works in suit are such that they may arguably be

entitled to copyright protection or patent protection, both

forms of protection or neither. | am asked to consider

the motion for preliminary injunction only from the point

of view of copyright infringement, yet it is clear that Sec-

tion 102 must be interpreted in terms of Congress’ intent

with regard to both copyright and patent, at least as pat-

ent law limits the scope of the 1976 Act.”

5. (Cont'd)

17 U.S.C, $101,

A “useful article” is an article having an intrinsic utilitarian

function that is not merely to portray the appearance of the

article or to convey information . . .

17 U.S.C, $101.

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).

Whoever invents or discovers any new and useful process,

machine, manufacture, or composition of matter, or any new

and useful improvement thereof, may obtain a patent,

35 U.S.C, $101.

6. Plaintiff Apple. relying on /n re Yardley, 493 F.2d 1389

(C.C.P.A. 1974, contends that the scope of the copyright is not lim-

ited by the scope of patent and that the same thing may receive both

and that plaintiff's reliance on Yardley is misplaced. The court in

Yardley, following the Supreme Court in Mazer v. Stein, 347 U.S.

201 (1954), found that the 1909 Copyright Law and the 1952 Patent

Law provided for overlapping protection. That analysis applied to

this case and the 176 Act begs the question. Section 102(b) explicitly

removes from copyright protection “any idea, procedure, process,

system, method of operation...” and section 101 explicitly excludes

those works whose “mechanical or utilitarian” function cannot be

separated from the work in which it adheres. 17 U.S.C. $8101 &

102(b). The test requires both “separability and independence from

‘the utilitarian aspects of the article “ H.R. Rep. No. 1476, 94th

District Court Decision and Order A43

B. The Divided Views of Others

The problems raised here stem from the fact that

there is no clear consensus on how to describe the tech-

nology employed in microcomputers. With no clarity there,

the application of law to fact becomes unsure. Plaintiff

Apple’s claim is based on the argument that |) a comput-

er’s Operating system is a form of expression, not an idea

or process; 2) whether in ROM or on floppy disk, object

code or an object program, containing code, is a form of

expression and a work of authorship and 3) a ROM is a

tangible medium of expression, not a mechanical device.

Leaving aside the question of how to describe the com-

puter’s technology and the works in suit, plaintiff argues

that it was the clear intent of Congress in the 1976 Act

and its 1980 Amendment to the Act to protect all com-

puter programs, in whatever form, as if they were a spe-

cies of “literary works.”

Opinion has been divided on how to treat object

codes, on the nature of the authorship entailed, and on

how to treat ROMs generally. The National Commission

on New Technological Uses of Copyright Works (here-

inafter “"CONTU") was divided. Judicial opinion has been

6. (Contd)

Cong.. 2nd Sess. 55 (1976). Neither Section 102(b) nor this test was

in the 1909 Copyright Act. In argument. plaintiff has not distin-

guished the form of the work from its utilitarian purpose. In fact. by

arguing that the works in suit are each “literary works” or forms of

expression, plaintiff has suggested the opposite: that ther function

and form are merged because cach work as a whole “convey{s| infor-

mation.” See definition of “useful article” 17 USC. S101. supra

note 5.

7 CONTU was established in 1974 to make recommendations

to Congress concerning the copyrightability of computer software

and other associated programs.1t submitted its Final Report in 1978.

Final Report. National Commission on New Technological Uses of

A4d4 District Court Decision and Order

mixed.” See Data Cash Systems, Inc. v. JS&A Group,

7. (Cont'd)

Copyrighted Works (1978) (hereinafter “Final Report’). The Final

Report consisted of a majority statement and separate statements by

Commissioner Nimmer (concurring), Commissioner Hersey (dis-

senting). and Commissioner Karpatkin (dissenting in support of

Commissioner Hersey).

The majority in the Final Report appear to be definite in its

attitude towards the copyrightability of computer programs. “Flow

charts, sources codes. and object codes are works of authorship in

which copyright subsists . . .” Final Report 21. Nonetheless in an-

other passage. the majority observed that “|clopyright, therefore

protects the program so long as it remains fixed in a tangible medium

of expression but does not protect the electro-mechanical functioning

of a machine.” Id. 20 (emphasis added). And again later, the major-

ity commented that “{i]f it should prove possible to tap off these

[electrical] impulses then, perhaps, the process would be all that was

appropriated, and no infringement of the copyright would occur.”

Id. 22. The present case is, of course, focussed exactly on those issues

the majority questioned. See infra notes 14-15 and accompanying

text.

In its summary, CONTU made clear that it had not resolved the

issues raised by programs encoded on a ROM.

It is equally important to note that these recommendations do

not deal with each and every technological issue affecting the

interests of copyright users and owners. Specific topics may de-

serve congressional attention . . . (2) protection for topography

or layout of microcircuit chips.

The question of copyright protection for the topography of mi-

crocircuit chips was raised by a manufacturer of these devices

too late to be dealt with adequately by the Commission.

Id. 79. See infra note 9 for discussion of subsequent congressional

investigation of copyright protection for chip topography.

In his concurrence, Commissioner Nimmer suggested that

CONTU had gone too far in its views of software copyright protec-

tion by extending protection to areas reserved for patent law or areas

deliberately left unprotected. /d. 26.

{I]t may prove desirable to limit copyright protection for soft-

ware to those computer programs which produce works which

themselves qualify for copyright protection. . . . A program de-

District Court Decision and Order A45

Inc., 480 F. Supp. 1063 (N.D. Ill. 1979), aff'd on other

7. (Contd)

signed for a computer game would be copyrightable because the

Output would itself constitute an audiovisual work. On the other

hand, programs which control the heating and air-conditioning

in a building. or which determine the flow of fuel in an engine,

or which control traffic signals would not be eligible for copy-

right because their operations do not result in copyrightable

works. . .

Id. 27. See infra text accompanying notes 18-19.

In his dissent. Commissioner Hersey noted the machine-control

character of a computer program. He contended it was neither a

“writing” nor a “liter. y work.” since it had no communicative func-

tion. Id. 27-30. “Communication as we understood it czases, and. . .

‘behavior’ — an opening and closing of electronic gates — sets in.”

Id. 37. See infra note 14.

8. Data Cash is perhaps the most definitive trial court opinion

holding that object code in ROM is not copyright protected. Its

analysis of the function of object code is persuasive. However, its

holding is somewhat weakened by the affirming opinion of the Court

of Appeals since it may be read as suggesting that ROMs may be

See infra text accompanying note 18.

In two other cases, a *vial court, considering allegations of re-

straint of trade in the coniyp ster field, observed that copyright does

not prevent others from copying the material embodiment of the

source program that is found in the object program. /n re Data Gen-

eral Corp. Antitrust Litigation, 490 F. Supp. 1089, 1113 (N.D. Calif.

1980); In re Data General Corp. Antitrust Litigation, 529 F. Supp.

801, 816 (N.D. Calif. 1981). In a somewhat similar question to that

raised here, the court in Synercom Technology, Inc. v. University

Computing Co., 462 F. Supp. 1003 (N.D. Tex. 1978) held that com-

puter input formats were not copyright protected. The court said

that “the litmus seems to be whether the material proffered for copy-

right undertakes to express.” /d. 1011 “Thus the issue is whether

[defendant] copied expressed ideas or their expression.” /d. 1012.

Tandy Corp. represents the opposite judical point of view. The

facts in Tandy Corp. are similar to this case, alleged infringement of

ROM object program that consisted of the computer's operating

system. Disagreeing with the decision in Data Cash, the court held

that the program was a work of authorship and that a ROM is a

A45 District Court Decision and Order

Cal. 1981).” The legislative history is unclear.’ Commen-

grounds, 628 F.2d 1038 (7th Cir. 1980); Tandy Corp. v.

Personal Micro Computers, Inc., 524 F. Supp. 171 (N.D.

&. (Cont'd)

tangible medium of expression under the Copyright Act. See infra

text accompanying note 16. More recently in GCA Corp. v. Chance,

et al. Civ. No. C-82-1062 (N.D. Calif. July 12, 1982), the court

followed Tandy, holding that object code in a ROM was copyright

protected since the source code was copyrighted. However. the court's

rather terse analysis provides little guidance.

In the last year, a number of courts have held that a ROM-

based object program used to create visual displays in arcade games

is properly coypright protected. Midway MFG. v. Artic Interna-

tional, Inc., F. Supp. . 211 U.S.P.Q. 1152 (N.D. Ill. 1982).

See infra text accompanying notes 20-21. Atari, Inc. v. North Amer-

ican Phillips Consumer Electronics Corp., No. 81-2920 (7th Cir.

March 2, 1982); Stern Electronics, Inc. v. Kaufman, No. 81-7411 (2d

Cir. Jan. 20, 1982); Atari, Inc. v. Amusement World, Inc., No. 81-

803 (D. Md. Nov. 27. 1981); Midway Manufacturing Co. v. Drik-

schneider, No. 81-0-243 (D. Neb. July 15, 1981); Williams Electron-

ics, Inc. v. Artic International, Inc., Civ. No. 81-1852 (D. N.J. June

24, 1981); Cinematronics, Inc. v. K. Noma Enterprise Co., Civ. No.

81-439 (D. Ariz. May 22, 1981).

9. Congressional intent regarding the copyrightability of object

codes and ROMs is not clear. The 1976 Act left intact the case law

developed under the 1909 Act. 17 U.S.C. $117 (1976). See H.R.

Rep. 116. The 1980 Amendment to Title 17, P.L. 96-517, incorpo-

rated a definition of computer programs, 17 U.S.C. $101 as amended,

and excluded from copyright infringement some forms of copying

and adaptation, 17 U.S.C. §117 as amended. While commentators

have been willing to interpret these amendments as extending abso-

lutely copyright protection to software, see Stern, Another Look at

subsequent legislative discussions suggest a restrictive reading.

In April 1979, Congress held hearings to consider a bill amend-

ing the 1976 Act in order to provide copyright protection for im-

printed design patterns on semiconductor chips. Copyright Protection

for Imprinted Design Patterns on Semiconductor Chips, 1979: Hear-

ing on H.R. 1007 Before the Subcomm. on Courts, Civil Liberties,

and the Administration of Justice of the House Comm. on the Judi-

District Court Decision and Order A47

9, (Contd)

clary, 96th Cong., Ist Sess. (1979) (hereinafter “Hearing on Chips”)

(not reported out of committee). The question facing the committee

was whether chips or integrated circuits are appropriately protected

and, if not protected, whether copyright protection should be ex-

tended to them through legislation, “In the judgment and practice of

the Copyright Office, the configuration of the chip is not [copyright-

able] — if you were to depict these patterns on an earlier piece of

paper we believe that piece of paper and the drawing ts copyrighted;

but there are limitations on the rights extended thereby.” Hearing on

Chips 21 (statement by Jon Baumgarten, at that time General Coun-

sel for the U.S. Copyright Office). “[I]t's a question of whether the

drawing and the chip are the same thing.” /d. 21. See infra note 10.

A recent House staff report inuicated that the debate continues.

“The current methods available for protecting software are patents,

best alternative is still under debate. The issue of software protection

reflects the problems associated with applying old legal tools to new

technologies, Staff Report of je House Comm. on Science and

Technology. Survey of Science and Technology Issues — Present and

Future. 97th Cong., Ist Sess. 69 (1981). “The underlying issue is

whether new forms of statutory protection are necessary to insure

the continued development of computer software. Congress may

wish to consider whether current efforts such as those to amend the

whether additional measures should be undertaken, Congress may

wish to closely monitor decisions by the Supreme Court in this area

in order to assess the need for legislative action.” /d, 70

10, Litigation reflects conflict. The recent increase generally in

litigation of the kind represented by this case reflects an increased

conflict in the applicability of the copyright law to ROMs and object

codes. See supra note 8. See also Getting Tough on Software Theft,

Business Week, 28-29 (May 31, 1982). As one might suspect by the

increased litigation, members of the industry appear not to agree on

whether the current law covers works like those in suit. Testimony at

the Hearing on Chips reveals the division, see supra note 9: testi-

mony of L.J. Sevin, president, Mostek Corp. in favor, Hearing on

Chips 22-31; testimony of Andrew S. Grove, president, Intel Corp.,

in favor, /d. 31-41; testimony of Professor James B. Angell, Stanford

University, in favor, /d, 47-50; testimony of John Finch, vice presi-

dent, National Semiconductor Corp., against, /d. 50-55; testimony

A4s District Court Decision and Order

tators have arrived at different conclusions. ''

Apple’s position is not implausible. The program of

an operating system Is, quite conceiveably, the expression

of an original work that is fixed in the tangible medium

of the written program or fixed in the medium that stores

it, whether it be disk or ROM. Object code may be said

to be the language used by a programmer in the same way

Hemingway may be said to have used English to write

For Whom the Bell Tolls. A ROM may be considered a

“tangible medium of expression,” fixing an original work

much as a book, record or motion picture film fix a liter-

ary work, a musical work or a motion picture. '* 17 U.S.C,

§$102(a)

10. (Cont'd)

of James M. Early, director, Fairchild Camera & Instrument Corp.,

against, /d. 35-62. The arguments are interesting and go to the heart

of policy questions related to the protection and promotion of this

technology. But it is sufficient to say that among this group there was

agreement that the copyright law does not clearly protect work like

those in suit that are ROM-based.

11. See generally ABA Subcomm., on Copyright Protection for

Video Displays, Discussion, Reports to Annual Meeting 162 (1982);

L. Gasaway & M. Murphy, Legal Protection for Computer Pro-

grams (1980); Rose, Intellectual Property Rights, 9 Pepperdine L.

Rev. 547 (1982); Stern, Roms in Search of a Remedy, 1 Computer

Law Reporter (1982); Schmidt, Legal Proprietary Interests in Com-

puter Programs, 21 Jurimetrics J. 345 (1981); Davidson & Russo,

Computer Programs & Data Bases 119 (1981); Keplinger, Protection

of Computer Software, 30 Emory L.J. 483 (1981); Stern, Another

Anything for Object Code?, 3 Computer/Law J. 1 (1981); Iskrant,

The Impact of the Multiple Forms of Computer Programs on Their

Adequate Protection by Copyright, 18 Copyright L. Symp. (AS-

CAP) 92 (1968).

12. Under this definition “copies” and “phonorecords” together

will comprise all of the material objects in which copyrightable works

are capable of being fixed. The definitions of these terms in section

101 [17 U.S.C. $101], together with their usage in section 102 [17

U.S.C. $102] and throughout the bill, reflect a fundamental distine-

District Court Decision and Order A4Y

C. Case Law and Copyright Law

All the analysis of the facts in this case depends upon

the meaning given to the key words of art used in the Act

and defined by the courts. They are: “creativity and orig-

inality,” “expression and ideas.” and “works of author-

ship”.

(1) “Creativity and Originality”

From the outset, it is important to recognize that the

issues raised here cannot be resolved on the grounds of

creativity —the presence or absence of it. Copyright law

does not require that the author or artist be exceptionally

creative or original. In fact, “a modicum of creativity may

suffice for a work to be protected.” Universal Athletic

Sales Co. v. Salkeld, 511 F.2d 904, 908 (3rd Cir.), cert.

denied 423 U.S. 863 (1975). Alternatively, extreme crea-

tivity does not in itself make an argument for copyright-

ability. At issue is only whether the works in suit are the

“fixed” expression of an author's “original work.”'

12. (Contd)

tion between the “original work” which is the product of “author-

ship” and the multitude of material objects in which it can be embodied.

Thus, in the sense of the bill, a “book” is not a work of authorship,

but is a particular kind of “copy.” Instead, the author may write a

“literary work,” which in turn can be embodied in a wide range of

“copies” and “phonorecords,” including books, periodicals, com-

puter punch cards, microfilm, tape recordings, and so forth... .

H.R. Rep. 53. Section 101, 17 U.S.C... defines “copies” as “material

objects |. . in which a work ts fixed by any method now known or

later developed . . . from which the work can be perceived, repro-

duced, or otherwise communicated, either directly or with the aid of a

machine or device.” (emphasis added) See infra note 21 and aecom-

panying text.

13. A work ts “fixed” in a tangible medium of expression when

its embodiment in a copy of phonorecord is sufficiently perma-

nent or stable to permit it to be perceived, reproduced, or otherwise

communicated for a period of more than transitory duration,

17 U.S.C. S101

AS50 District Court Decision and Order

Nevertheless, “[i]t is possible to have an ‘original

work of authorship’ without having a ‘copy’ embodying

it, and it is also possible to have a ‘copy’ embodying

something that does not qualify as an ‘original work of

authorship. ~ H.R. Rep. 53. Although there can be a

variety of different material embodiments of the work,

there can be only one original work.

In the case of computer programs, like those in suit,

one must be able to identify the original work that has

been embodied. It is not clear whether the program-de-

signer’s idea of the operating system program, the source

program, or the ROM is the “original work of author-

ship.” It is not surprising that this should be hard to de-

termine, because at each stage major transformations in

the structure of the “program” take place. From plain-

tiff’s point of view, the best argument is that the idea of

the operating system is the “original work” and that all

that follows are copies. The counter-argument that plain-

tiff must respond to is a technical one that goes to the

heart of the technology: in the case of the programs on

ROM did the programmer-designer imagine the architec-

tural structure of the ROM, the overlay of micro-switches

that would be most economical and efficient for the sys-

tem, or did he envision the flow chart of operations which

the program would perform? If the former, the program-

mer may be said to have been an engineer designing a

utilitarian aspect of the machine. If the latter, the pro-

grammer may not be said to have designed the architec-

ture of the chip. See infra note 14 and accompanying text.

Apple’s argument that its programmers displayed

virtuoso skill, if not genius, in developing the programs

and the ROMs is not dispositive, even though I tend to

agree that the evidence demonstrates their extraordinary

skill. In the context of the Copyright Act, an “original”

work need not be with a work of genius.

District Court Decision and Order AS1

(2) “Expression and Ideas”

The distinction between ideas and expression, while

not always self-evident, is crucial. An “expression” may,

under some circumstances, be said to be the tangible,

fixed form of an idea where the expression’s purpose is

“to convey information.” 17 U.S.C. $101. Such a stat-

utory reading is consistent with both the Act’s legislative

history, H.R. Rep. 52-53, and case law. Any tangible

form can be treated as the constitutional equivalent of

“writings.” Burrow-Giles Lithographic Co. v. Sarony, 111

U.S. 53, 58 (1884). which are the classic, permanent me-

dium for conveying information and transmitting ideas.

Enlarged as the concept of “writings” now is, it re-

tains its original meaning: to express and communicate.

Baker v. Selden, 101 U.S. 99 (1879), made the first, and

still most notable, statement of this proposition. “The

description of the art in a book, though entitled to the

benefit of copyright. lays no foundation for an exclusive

claim to the art itself. The object of one is explanation;

the object of the other is use. Id. 105 (an accounting form

held not copyrightable, but the explanation of the form

was) (emphasis added).

Admittedly, the holding in Baker has been somewhat

limited after Mazer v. Stein, see supra note 6, see also |

Nimmer on Copyright, §2.18[C], but the underlying per-

ception still retains its vitality. The balance Baker pre-

sented between “explanation” and “use” is the balance

between the material meant to be protected by the

protected by the patent clause. Accord Taylor Instrument

Companies v. Fawley-Brost Co., 139 F.2d 98, 99 (10th

Cir. 1943). Following Baker, the court in Taylor drew the

distinction between copyright and patent as between that

which “teaches . . . [and] explains the use of the art” and

that which “is an essential element of the machine.” Jd.

100. The vetality of Baker is found in the distinctions

A52 District Court Decision and Order

drawn between Section 102(a) and Section 102(b) in the

Act, between that work “fixed in a tangible medium of

expression” and that which has its primary function the

exploitation or use of an idea. See H.R. Rep. 56-57.

It is not clear in this case that an operating system in

binary code or one represented either in a ROM or by

micro-switches are “explanations” under the Baker- Tay-

lor doctrine. Equally, it is not clear that object code,

which was not designed to be “read” by a human reader

and can only be read by an expert with a microscope and

patience, is a language of description. It cannot teach. It

can be used to control the operation of the computer. For

these reasons, it may be more accurate to say that oper-

ating systems are an essential element of the machine, if

not an essential part of the machine that makes it work.

Similarly, it may be more accurate to say that object code

in its binary form or chip form is a useful version of the

machine’s electrical pulse.

(3) “Works of Authorship”

of authorship. 17 U.S.C. §102(a). Working directly in

object code, the programmer appears to think in the

manner of a mathematician or engineer, who solves ex-

plicit problems that have defined parameters.'* While it

14. At the level of the microcode, physical and abstract

meet. The microcode controls the actual circuits. . . . Indeed,

the physical machine responds only to microde. It was micro-

code, at bottom, that caused [the computer] to translate [the

division symbol] into microcode. In this sense, the computer

chases its tail.

. . . Writing microcode, however, is no simple task. The

code is by definition intricate. To make the machine execute just

one of its two hundred basic instructions, the coder usually has

to plan the passage of hundreds of signals through hundreds of

gaies. Limited storage space forces the coder to economize —to

make one microinstruction accomplish more than one task, for

example. At the same time, though, the coder must take care

District Court Decision and Order A53

is tempting to treat all computer programs as “literary

works,” such an analysis may only serve to confuse the

meaning of authorship.

The process of constructing a chip is “not so much a

work of authorship as the product of engineering knowl-

edge (often skillful and sometimes creative) focused on

obtaining a desired function or output. Accordingly, . . .

the resulting integrated circuit represent(s] the function

desired in the circuit rather than an effort of the type

exerted by authors.” Hearing on Chips 59 (statement of

James Early on behalf of Fairchild Camera & Instru-

ment Corp.). See supra note 9. Hence, it may be more

apt to describe an encoded ROM as a pictorial three-

dimensional object than as a literary work and to discount

the notion of authorship associated with literary or cre-

ative works.

Programmers need not write in object code and, most

do not, because the computer can make its own “transla-

tion” of object code from an original source code.'* Be-

14. (Cont'd)

that One microinstruction does not foul up the performance of

another.

.. . Writing microcode is like nothing else in my life. For

days there’s nothing coming out. . . . [F]inally I get into a men-

tal state where I'm a microcode-writing machine. . . . You have

to understand the program thoroughly and you have to have

thought of all the myriad ways in which you can put your mi-

croverbs together. You have a hundred L-shaped blocks to build

a building. You take all the pieces, put them together, pull them

apart, put them together. After a while, you're like a kid on a

jungle gym. There are all these constructs in your mind and you

can swing from one to the other with ease.

T. Kidder, The Soul of a New Machine, 97-102 (1981) (quoting pro-

gram designer) (emphasis added).

15. Programs written in source codes are generally conceded to

be copyrightable. See Keplinger, Protection of Computer Software

510; Stern, Another Look at Copyright Protection of Software 4;

Synercom at 1013n.5.

A54 District Court Decision and Order

cause this is so, it is argued that the “automatic” translation

of source to object code establishes a predictable one-to-

one relationship between the two codes that preserves

the programmer's original force of authorship. See GCA

Corp. v. Chance, et al., Civ. No. C-82-1062 (N.D. Calif.

Protection of Software, 3 Computer/Law J. 1, 3 (1981).

‘e reasoning that finds object code a derivative work

of » .cce code and thus copyrightable, 17 U.S.C. $103(a),

follows somewhat Judge Hand’s in Reiss v. National Quo-

tation Bureau, Inc., 276 Fed. 717 (S.D.N.Y. 1921) (mean-

ingless code words were copyright protected). See CONTU,

Final Report 14-15. According to this reasoning, the pro-

grammer meets the standard of authorship when he has

created expressions even if the computer is to supply its

own “meaning” and its own use. “I can see no reason why

[the code] words should not be [writings] because they

communicate nothing. They may have their uses for all

that, aesthetic or practical, and they may be the produc-

tion of high ingenuity, or even genius.” Reiss, 276 Fed. at

719. See Iskrant, The Impact of Multiple Forms of Com-

puter Programs 118.

15. (Cont'd)

Source codes are mnemonic systems of abbreviating machine

instructions. “Typical abbreviations might be HLT for “halt,” STA

for “store in register A,” BR+ for “branch if the register is plus,”

XZJ for “jump if index register is zero.” Iskrant, The Impact of the

Multiple Forms of Computer Programs, 18 Copyright L. Symp.

(ASCAP) 92, 105 (1968). Source programs are placed in the com-

puter through the keyboard, by disk, tape or cards and, then, are

converted by the machine into an intermediate assembly language

and finally into object code. See T. Kidder, The Soul of a New

Machine 97-99. Although programmers normally write in source code

because it can easily be read and corrected, programmers may write

direct!y in object code when it is necessary to have direct control

over the architecture of the ROM. See supra note 14.

District Court Decision and Order A55

D. The Rom as Three-Dimensional, Pictorial,

Graphic or Sculptural Work

It is precisely the problem of description that makes

this problem so baffling. The list of comparisons, thanks

to ingenious counsel, is a long one; equally good analo-

gies lead to contradicting results.

ROMs which have interiors etched or designed to

incorporate object code in their physical shape may be

likened to three-dimensional works of art, Mazer v. Stein,

347 U.S. at 210-215, and therefore be entitled to copy-

right protection. See supra note §.

In Taney Corp. v. Personal Micro Computers, Inc.,

the court viewed an encoded ROM as being somewhat

akin to a three-dimensional object that may not be copied

by a non-copyrightholder without infringing on the copy-

right. /d. 173, 175. In this light, a ROM is taken to be a

self-contained and clearly fixed form of expression since

“duplication of a chip is not the use of a copyrighted

program ‘in conjunction with’ a computer; it is simply the

copying of a chip.” /d. 175. This analysis contradicts

somewhat the view of the CONTU majority that a “tapped

off” ROM may not be protected from copyright infringe-

ment.'”

On the other hand, ROMs encoded with an object

program may be compared to a physical structure with an

essentially useful purpose or function, like that of a bridge,

Muller v. Triborough Bridge Authority, 43 F. Supp. 298,

299 (S.D.N.Y. 1942), or to an architectural work like a

house, De Silva Construction Corp. v. Herrald, 213 F.

Supp. 184, 195-196 (M.D. Fla. 1952). As such, an object

program encoded on a ROM would not be entitled to

16. See supra note 7. See also Stern, Roms in Search of a Rem-

edy, | Computer Law Rep. (1982).

17. See also Data Cash, 480 Fo Supp. at 1068.

A56 District Court Decision and Order

the court went further: the construction of a building by

the copyrightholder does not amount to publication of

the plans. /d. 196. Plans are different from the building

based upon the plans.

It is possible that this is the situation in the current

dispute: neither the Apple nor Franklin ROM is a copy

of an “original work” since the plan upon which each is

based may be considered to exist separately from the chip

that is ultimately constructed. Absent copying, there is

no infringement of copyright. Mazer v. Stein, 347 U.S. at

218.

The issue here is, of course, whether the ROM

structured with code is a new entity created through the

use of the plans, /.e., the program, or whether it incor-

porates the plan or program in its own structure. If the

former, under the reasoning of De Silva Construction

Corp., it would not be entitled to copyright protection. If

the latter, it might be entitled to protection. But even

here, the protection might only extend to the ROM with

its interior. It would not cover the object code by itself.

E. The Expression of a Utilitarian Function

Defendants argue that the programmed ROM is an

object that merges idea and expression to the point they

are indistinguishable, see Herbert Rosenthal Jewelry Corp.

v. Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971), or merges

its utilitarian function and expressive purpose so that they

too are inseparable, see Esquire, Inc. v. Ringer, 591 F.2d

796, 798-800 (D.C. Cir. 1978), cert. denied 440 U.S. 908

(1979). It is this inseparability of function and purpose

that the court in Data Cash found, where it was held that

the ROM at issue was not copyrightable."

18. See supra note 8.

District Court Decision and Order A57

The copyright protection available to a ROM is sim-

ilarly restricted if the ROM is defined as a mechanical

device. “In its object phase, the computer program is a

mechanical device which is engaged in the computer to

become an essential part of the mechanical process.”

Keplinger, Computer Intellectual Property Claims, 1977

Wash. L.Q. 461, 464 (quoted with approval in Data Cash,

480 F. Supp. at 1067n.4(2). See also Stern, Another Look

at Copyright Protection, 3 Computer/Law J. at 2. See

generally D. Fink, Computers and the Human Mind at

131-177. If a ROM is found to be a mechanical device, it

loses the protection reserved for writings and expression

under copyright. 1 Nimmer on Copyright §2.18/4] (1979)

(quoted with approval in Data Cash, 480 F. Supp. at

1067n.4(2). The argument that a ROM is a mechanical

device has been made:

Descriptions and printed instructions tell human beings

how to use material or machinery to produce desired

results. In the case of computer programs [on the

other hand], the instructions themselves eventually

become an essential part of the machinery that pro-

duces the results. They become (in chip or hardware

form) a permanent part of the actual machinery. . . .

This is a device capable of commanding a series of

impulses which open and close the electronic gates

of the computer in such order as to produce the de-

sired result.

CONTU, Final Report 28 (Commissioner Hersey dis-

senting) (emphasis in original).'” Commissioner Hersey

observes that the appropriate analogy to describe a pro-

gram within the computer is that of a “cam” which, “like

a mature computer program, is the objectification of a

series of instructions.” /d. 29-30. While either the cam or

19. See supra note 7.

AS8 District Court Decision and Order

the machine-language or binary code may be read by an

expert, its purpose is not to serve as a form of human

communication. As he wrote, echoing the Baker-Taylor

doctrine, “[p]rinted instructions explain how to do some-

thing: programs are able to do it.” Jd. 28 (emphasis in

original).

The argument made by Commissioner Hersey and

by defendant Franklin that the ROM is a mechanical

device is an argument for its patentability. See supra note

6. A ROM may be characterized as firmware, a combi-

nation of software and hardware that operates together -

to control a computer. Certain firmware is protectable

under patent law. Diamond v. Bradley, 450 U.S. 381 (1981)

(per curiam), aff'g by an equally divided court In re Brad-

ley, 600 F.2d 807 (C.C.P.A. 1979).

‘The argument for the patentability of the various

operating systems in suit may also rest on the view that

they are manifestations and implementations of the “use-

ful arts,” as the ferm is understood in patent law, directed

to producing a beneficial result. Diamond v. Diehr, 450

U.S. 175, 182-183 & n.7 (1981). A computer’s operating

system is, by this view, the means by which a computer is

“transformed and reduced to a different state or thing,”

Cochrane v. Deener, 94 U.S. 780, 788 (1877); accord Dia-

mond v. Diehr, 450 U.S. at 183, although it would have

to be shown that its transformed state is specialized and

distinct from that of other machines of the same class. I

do not, of course, conclude that Apple will be able to

satisfy the rather rigorous tests of the patent law.

F. The Test of Communication for Copyright

The Baker-Taylor doctrine suggests that the scope of

lying expressive or communicative purpose. It is a test

not easily applied because it raises questions at the very

District Court Decision and Order A59

heart of all discussions on the purpose and meaning of

language. It is a test not easily satisfied by works, like

those in this suit, that are in the form of binary code and

electro-mechanical chips.

Perhaps it is sufficient to say in the context of the

present motion for preliminary injunction that no matter

how indirect or exotic the form of expression or the me-

dium used, the question must be: is the expression di-

rected to a human audience?

A recent case like Midway Mfg. Co. v. Artic Inter-

national, inc.., F. Supp. . 211 U.S.P.Q. 1152 (N.D.

Ill. 1982) (ROM containing the code for a visual display

held copyrightable) reveals the complexity of the ques-

tion presented by the present case and the fragile but

important distinctions that must be made when consider-

ing the copyrightability of object codes.~” In Midway, the

object code was the underlying system used by the com-

puter to produce a series of visual images that were meant

to be perceived by an arcade game player.

Restricted to these facts, it is not illogical to treat the

object code as an “expression . . . which can be per-

ceived, reproduced, or otherwise communicated, either

directly or with the aid of a machine or device.”*! 17

20. See supra note 8.

21. It does not distort this phrase to understand it as requiring

that the work be perceptible to a human audience and not merely

perceptible to a machine. Its plain meaning suggests that machine

aid is recognized in th.s section only if it is capable of aiding human

perception and supporting human communication. A similar con-

struction is used in Section 401, “notice of copyright: Visually per-

ceptible copies.” It would indeed be a curious interpretation of Section

401 if it were to be read as referring to anything but a copy that can

be humanly perceived.

.. . [A] notice of copyright as provided by this section shall

be placed on all publicly distributed copies from which the work

A60) District Court Decision and Order

U.S.C. §102(a). The “original work” is the visual display

that has been fixed, presumably, first in source code and

later in object code. No matter how it has been fixed, its

purpose from the outset was to generate an image that

could be perceived and its goal was to attract and engage

a human audience. Such purposes and goals satisfy our

conventional expectations of expression.

If the concept of “language” means anything, it means

an ab

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