# Petition — Franklin Computer Corp. v. Apple Computer, Inc. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385011_0862%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition - **Published:** January 1, 1984 - **Citation:** 464 U.S. 1033 ## Text 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, v. 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 a eas tua nie swe Be nT Pane cu wewedepeveeue re a wweeadaswes re a alee eweba CONSTITUTIONAL AND STATUTORY PROVISIONS INVOLVED wee ewecueueve REASONS FOR GRANTING THE WRIT ................. eS cy eldebeeeeus l. Il. Ill. iV. 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 ee ee 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 a THis Court SHOULD CLARIFY THE RELEVANCE OF IRREPARABLE HARM IN PRELIMINARY INJUNCTION CASES INVOLVING CLAIMS OF COPYRIGHT a oe ea ead eke PE te ne on clue Seweie a (ii) 17 23 24 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.. ere ee er Ce cs SEED noes 6 bien eld SU ees 7 CONSTITUTION, STATUTES, AND CourRT RULES: Cree ee see EA ee oe Ch cw airace a wate we CopyRiGHT Act RE 2 a Si 5) en SURAT See ea C PR UENO obo ens Joi nsscalonee’s Guuenes passim ee ES oa og ok a Oe OA ee Ree ae oe 21 JUDICIAL CODE ee Cs WE oo ec kk e's bd a hae bts ce 2 Tas BE, ok oN cas wc ae 6 ote 6 (iv) IN THE SUPREME COURT OF THE UNITED STATES October Term, 1983 FRANKLIN COMPUTER CORPORATION, Petitioner, v. 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. to 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 Copyright Act, 17 U.S.C.A. § 101, Pub. L. No. 96-517, § 10, 94 Stat. 3028 (1980) (Software Copyright Act of 1980) Copyright Act, 17 U.S.C. § 102(b) (Supp. III 1979) 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. 4 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 5 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. 6 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 Copyright Act, which mandate that “systems,” “proc- 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. 9 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 copyright infringement. 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. 10 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), 1] 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. (c) Third, the copyrighting of operating systems will 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- 12 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. 13 Baker held: (1) that use of a system does not infringe a copyright on the description of the system, (2) that copyright does not exiend to purely utilitarian works, and (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 copyright and the province of patent is grounded in the 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. 14 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 copyright if it is incorporated in a utilitarian object. The 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. 16 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. 17 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. 18 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 19 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. 20 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 copyright protection, inter alia, “processes,” “systems,” “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 21 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 Copyright Act. Those amendments merely added a gen- 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 22 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. 23 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. 24 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 Al 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, Copyright Protection of Computer Program Object Code, 96 Harv. 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 copyright counts included the affirmative defense that 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 copyright infringement claims. Apple produced evidence 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 Copyright Act of finding “original works of authorship”, 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 copyright can exist in a computer program embedded on 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 copyright infringement actions. 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 copyright law be amended. inter alia, “to make it explicit 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 copyright law.” /d. 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 copyright infringement cases, the jeopardy to Apple's 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 copyright law requires a presumption of irreparable harm, 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 copyright: to protect through limited monopoly original 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 [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385011_0862%3A1. Public record. Not legal advice.