# Amicus Curiae Brief — Fogerty v. Fantasy, Inc.

> Briefs, arguments, decisions, and more.

URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385013_0397%3A09

## Record

- **Collection:** Supreme Court brief
- **Document type:** Amicus Curiae Brief
- **Published:** January 1, 1994
- **Citation:** 510 U.S. 517

## Text

aAppeaet a

Peres SACRE

ee ee ee ee
J + #. BS i ar
Ear + + ren i? we ey» ae
» a | ‘%

“fon wad tricks ~ & rT. =

a ore 7 .

Table of Contents

Table of Authorities .....................

Interest of Apple Computer, Inc. as Amicus Curiae . .

Summary of Argument....................

RE ee ee a

I.

II.

I.

THE NINTH CIRCUIT RULE IS WELL
ESTABLISHED WITH A LONG HISTORY AND
SHOULD BE PRESUMED TO HAVE
RECEIVED CONGRESSIONAL APPROVAL BY
ENACTMENT OF THE COPYRIGHT ACT OF
1976; IT ALSO SHOULD BE APPROVED AS
CONSISTENT WITH THE RULE ADOPTED BY
THIS COURT AND OTHER FEDERAL
COURTS IN INTERPRETING ESSENTIALLY
IDENTICAL STATUTORY PROVISIONS IN
OTHER FEDERAL LAWS .............

THE NEED OF THE NINTH CIRCUIT RULE IS
ESPECIALLY ACUTE IN SUITS TO ENFORCE
COPYRIGHTS PROTECTING COMPUTER
EE. Ns 66 ob ce sc eS oie saws

PETITIONER’S ARGUMENTS DO NOT
REFUTE OR IMPAIR THE REASONING
SUPPORTING THE NINTH CIRCUIT RULE .

Conclusion .......................

11

ii
Table of Authorities
Cases: Page(s)

Aliotti v. R. Dakin & Co., 831 F.2d 898 (9th Cir.
MP 25

Alyeska Pipeline Serv. Co. v. Wilderness Soc Y,
421 U.S. 200 (1979)... oc ccc u eee 24

Apple Computer, Inc. v. Franklin Computer Corp..,
714 F.2d 1240 (3d Cir. 1983), cert. dismissed,

464 U.S. 1033 (1984) ................... 16, 28
Apple Computer, Inc. v. Mackintosh Computers

Lid., 28 D.L.R.4th 178 (Can. Fed. Ct. 1986) ...... 26
Apple Computer, Inc. v. Microsoft Corp..,

709 F. Supp. 925 (N.D. Cal. 1989)........... 2, 14

717 F. Supp. 1428 (N.D. Cal. 1989) ............ 2

759 F. Supp. 1444 (N.D. Cal. 1991) .......... 2, 14

779 F. Supp. 133 (N.D. Cal. 1991)........... 2, i$

799 F. Supp. 1006 (N.D. Cal. 1992) .......... 2, 15

Applied Innovations, Inc. v. Regents of the University
of Minnesota, 876 F.2d 626 (8th Cir. RAE 22

Breffort v. I Had a Ball Co., 271 F. Supp. 623
(S.D.N.Y. 1967)... 2.00 ne 20

Broderbund Software, Inc. v. Unison World, Inc..
648 F. Supp. 1127 (N.D. Cal. 1986) ............ 12

Bull HN Info. Sys., Inc. v. American Express
Bank Ltd., [1989-1990] Copyright L. Dec.
(CCH) { 26,555 (S.D.N.Y. 1990).............. 12

ill
Christiansburg Garment Co. v. EEOC.
EE passim
Cloth v. Hyman, 146 F. Supp. 185 (S.D.N.Y. 1956) .._ 10

Computer Assocs. Int'l v. Altai, Inc., 982 F.2d
ccc cece 14

Dae Han Video Prod. v. Dong San, Chun, 17
U.S.P.Q.2d (BNA) 1306 (E.D. Va. 1990)... ae

Dean v. Burrows, 732 F. Supp. 816 (E.D. Tenn.
EES Tor

Diamond v. Am-Law Publishing Corp., 745 F.2d
rk kt eke nee ll

Digital Communications Assocs. v. Softklone Distrib.
Corp., 659 F. Supp. 449 (N.D. Ga. 1987) _....... 12

Dolori Fabrics, Inc. v. The Limited. Inc.. 662
F. Supp. 1347 (S.D.N.Y. 1987) ............._._. 23

Donald Frederick Evans & Assocs. v. Continental
Homes, Inc., 785 F.2d 897 (11th Cir. a 7, 21

Educational Testing Serv. v. Miller, [1991-1992]
Copyright L. Dec. (CCH) 4 26,841 (D.D.C. 1991)... 23

Fantasy, Inc. v. Fogerty, 984 F.2d 1524 (9th Cir.).
cert. granted, 113 S. Ct. 2992(1993) ........... 11

Flag Fables, Inc. v. Jean Ann's Country Flags &
Crafts, Inc., 753 F. Supp. 1007 (D. Mass. 1990) 7. 11. 21

iV
Page(s)
Folio Impressions, Inc. v. Byer California,

Sor wae vom GO Cis. BORED . ww. ww cece 7, 11
Hartman v. Hallmark Cards, Inc. , 833 F.2d 117

Ce 6 4 or oot eee Oa 7, 21
Hensley v. Eckerhart, 461 U.S. 424 (1983) .......... 9
Herman & MacLean v. Huddleston, 459 U.S. 375

Chae ek eb bce eae ee Te ee 10
Homeward Bound, Inc. v. Hissom Memorial Ctr..

963 F.2d 1352 (10th Cir. 1992) ................ 8
Hughes v. Rowe, 449 U.S.5 (1980) .............. 8
In re Gelnovatch, 595 F.2d 32 (C.C.P.A. 1979)... .. 28
Independent Fed'n of Flight Attendants v. Zipes,

oo eee 9, 18, 19
Jobete Music Co. v. Massey, 788 F. Supp. 262

ND ae eter at 23
Johnson Controls, Inc. v. Phoenix Control Sys...

886 F.2d 1173 (9th Cir. 1989)... .......... 12, 25
Keene Corp. v. United States, 113 S. Ct.

BR Raper el at a a eS 10
Kepner-Tregoe, Inc. v. Carabio, 203 U.S.P.Q.

(BNA) 124 (E.D. Mich. 1979) ................ 23
Lieb v. Topstone Indus., Inc., 788 F.2d 151 (3d

SIE tate ig ed are Re en 22

Page(s)
Lindahl v. Office of Personnel Mgmt., 470 U.S.

EE li OE re ade Badd ooo 1]
Lotus Dev. Corp. v. Borland Int'l, Inc., 788 F.

Supp. 78 (D. Mass. 1992)................... 26
Manufacturers Technologies, Inc. v. Cams, Inc.,

706 F. Supp. 984 (D. Conn. 1989) ......... 12
Mazer v. Stein, 347 U.S. 201 (1954) ............. 25
McCulloch v. Albert E. Price, Inc., 823 F.2d

ee EE en lo bho oe ke me xc < 0 SE
Midway Mfg. Co. v. Artic Int’l, Inc., 704 F.2d

1009 (7th Cir.), cert. denied, 464 U.S. 823

die aa oe be ele A aS OR eo x « ce s 28
Motta v. Samuel Weiser, Inc., 633 F. Supp. 32

SN So's nid ale Salta sera ad be ok ea, 22
Nemeroff v. Abelson, 620 F.2d 339 (2d Cir.

SE irk arcs. oa Ve tek wie 4.0 We ea be. 6 eS. cas 9
Newman v. Piggie Park Enters., 390 U.S. 400

SE ib ho 664 046 ob vob eh ewe eheclans 19
Northcross v. Board of Educ., 412 U.S. 427

RE a ee, ee 4
Pearl Sys., Inc. v. Competition Elecs., Inc..

8 U.S.P.Q.2d (BNA) 1520 (S.D. Fla. 1988) 12
Pennsylvania v. Delaware Valley Citizens’ Council

for Clean Air, 483 U.S. 711 (1987)... . . 8

SS

vi
Page(s)
Pierce v. Underwood, 487 U.S. 552 (1988) ......... 10
Reader's Digest Ass'n v. Conservative Digest,

Inc., 821 F.2d 800 (D.C. Cir. 1987) .......... 7, 21
Rosciszewski v. Arete Assocs., Nos. 92-2122.

92-2390, 1993 WL 283213 (4th Cir. July 29, 1993)... 21
Roth v. Pritikin, 787 F.2d 54 (2d Cir. 1986) ...... 7,11
Roulo v. Russ Berrie & Co., 886 F.2d 931 (7th Cir.

1989), cert. denied, 493 U.S. 1075 (1990) .....__.. 22
Ruckelshaus v. Sierra Club, 463 U.S. 680 (1983) _ 8
Rural Tel. Serv. Co. v. Feist Publications

inc., 24 U.S.P.Q.2d (BNA) 1312 (D. Kan. 1992) .. 11. 21
SAS Inst., Inc. v. S&H Computer Sys., 605 F.

Supp. 816 (M.D. Tenn. 1985) ........... 12
Sassower v. Field, 973 F.2d 75 (2d Cir. 1992).

cert. denied, 113 S. Ct. 1879 (1993) .......... 9
Sega Enters. Lid. v. Accolade, Inc., 977 F.2d

SI ED «oo ss o's os occ beac. 14
Sherry Mfg. Co. v. Towel King, 822 F.2d 1031

NI oe ele ed ok 21
United States v. Hamilton, 583 F.2d 448 (9th

PP “elsews acetyl ou ed. se... us c. 26
United States v. Ryan, 284 U.S. 167 (1931) 10

Vil

Page(s)

Video Views, Inc. v. Studio 21, Lid., 925 F.2d 1010

(7th Cir.), cert. denied, 112 S. Ct. 181 (1991) .... 7.19
Warner Bros. v. Dae Rim Trading, Inc., 877 F.2d

a a 22
Whelan Assocs. v. Jaslow Dental Lab., Inc.,

609 F. Supp. 1325 (E.D. Pa. 1985), aff'd, 797

F.2d 1222 (3d Cir. 1986), cert. denied, 479

DT Sa 2 cate es Oe ole ee 10, 12, 23
Statutes :
1 Stat. 124 (Act of May 31,1790) .............. 26
15 U.S.C. § 78i(e) (Securities Exchange Act of 1934) _.. 9
15 U.S.C. § 2618 (Toxic Substances Control Act) ..... s
16 U.S.C. § 1540 (Endangered Species Act of 1973) ... 8
17 U.S.C. § 101 (Copyright Act of 1976) .......... 13
17 U.S.C. § 116 (Copyright Act of 1909) ......._... 10
17 U.S.C. § 502 (Copyright Act of 1976) .......... 20
17 U.S.C. § 503 (Copyright Act of 1976) .......... 20
17 U.S.C. § 504 (Copyright Act of 1976) .......... 20
17 U.S.C. § 505 (Copyright Act of 1976) ....._.. 2.4, 7

29 U.S.C. § 794a(b) (Rehabilitation Act of 1973) __._. . 9

Vili
Page(s)

30 U.S.C. § 1270 (Surface Mining Control and

Reclamation Act of 1977) .................... sy
30 U.S.C. § 1427 (Deep Seabed Hard Mineral

I 6d ok 85 Wik Dak in oes oe eu een bs
33 U.S.C. § 1365 (Clean Water Act).............. x
33 U.S.C. § 1415 (Marine Protection, Research.

and Sanctuaries Act of 1972) .................. x
33 U.S.C. § 1515 (Deepwater Port Act)............ 8
42 U.S.C. § 300j-8 (Safe Drinking Water Act)........ ®
42 U.S.C. § 1988 (Civil Rights Act of 1964) ......... x
42 U.S.C. § 2000(e)-5(k) (Civil Rights Act of 1964) . 8, 1]
42 U.S.C. § 3613(c)(2) (Fair Housing Act) .......... 9
42 U.S.C. § 4911 (Noise Control Act)..........._.. x
42 U.S.C. § 6305 (Energy Policy and

RR Oe ees x
42 U.S.C. § 7604(d) (Clean Air Act Amendments

ere a ate eR ta.
42 U.S.C. § 7607(f) (Clean Air Act Amendments

ae 4, eee baa S81 ee ee ee &
42 U.S.C. § 8435 (Powerplant and Industrial

ES Gs, ara oo es . 8

ix

42 U.S.C. § 9124 (Ocean Thermal Energy
I GD IIs x 6c oc oo hc ob ccceweeck «

43 U.S.C. § 1349 (Outer Continental Shelf
Lands Act Amendment of 1978) ................ ~

Legislative Authorities:

Ralph S. Brown, Jr. et al., The Operation of
the Damage Provisions of the Copyright Law:
An Exploratory Study, Study No. 23, Subcomm.
on Patents, Trademarks, and Copyrights of the
Senate Comm. on the Judiciary, 86th Cong..,
2d Sess. 59 (Comm. Print 1960)............. 9, 10

H.R. Rep. No. 1476, 94th Cong., 2d Sess. 51,
54, reprinted in 1976 U.S.C.C.A.N. 5659 ........ 13

National Commission on New Technological Uses of
Copyrighted Works, Final Report (July 31, 1978) .. 13, 14

Report of the Register of Copyrights on the
General Revision of the U.S. Copyright Law,
87th Cong., Ist Sess. 109 (H. Judiciary
ee 9, 10

William S. Strauss, The Damage Provisions of
the Copyright Law, Study No. 22, 86th Cong.,
2d Sess. 1 (Comm. Print 1960) ................ 9

x
Page(s)
Other Authorities:
1 Richard L. Bernacchi et al., Bernacchi on
Computer Law § 3.11.4 (1992)................ 12
Frederick P. Brooks, Jr., The Mythical Man-Month
DAS Ae Te Rae eae eee ese ce 26
Anthony L. Clapes et al., Silicon Epics and
Binary Bards: Determining the Proper Scope of
Copyright Protection for Computer Programs,
34 UCLA L. Rev. 1493 (1987) ............... 12
Anthony L. Clapes, Software, Copyright, and
I ets ce ees ere 2 a) 12
Anthony L. Clapes, Softwars--The Legal Battles for
Control of the Global Software Industry (1993) ...... 13
Alan Deutschman, Bill Gates’ Next Challenge,
WOME, Ws GI, TE neice ccc ce en ccuee 13
William H. Gates, Insurance for the Industry's
Future, N.Y. Times, Sept. 25,1983 ............ 17
William H. Gates, Letter to the Editor,
InfoWorld, Aug. 16, 1993 .................. 16
Morton D. Goldberg & John F. Burleigh, Copyright
Protection for Computer Programs: Is the Sky
Falling?, 17 AIPLA Q.J. 294 (1989) ............ 13

Patricia Keefe, Survey of Software Firms Taps
Industry's Hot Buttons, ComputerWorld, Nov.
OY es) o bn see ew bee ea ee eee 18

xi

Page(s)
William F. Patry, Latman’s The Copyright Law

CE ee re ee 25
PC Software Market Booming, Standard & Poor's

Industry Surv.: Computers Basic Analysis,

ee Eb pp ee es we aes se bk ees 18
Thomas D. Rowe, Jr., The Legal Theory of

Attorney Fee Shifting: A Critical Overview,

ee 19, 20, 24
F.M. Scherer, /nnovation and Growth:

Schumpeterian Perspectives (1984) ............. 18
Michael D. Scott, Computer Law § 3.78 (1989) ...... 12
Ben Shneiderman, Software Psychology (1980) ....... 26
V. Siber, Remarks to the Annenberg Foundation,

ag ee ee Pk wae ea ae ae 0 16
1 The Supreme Court Practice R. 3(3) (Eng. 1992) .... 24
U.S. Department of Commerce, 1987 Census of

Service Industries, Table 3a, at US-19 (Nov. 1989) ... 16
WIPO Guide to the Berne Convention 2-1 (1978) ..... 26

IN THE

SUPREME COURT OF THE UNITED STATES

OCTOBER TERM, 1993

No. 92-1750

JOHN C. FOGERTY,

Petitioner,
Vv.

FANTASY, INC.,
Respondent.

On Writ of Certiorari to the United States
Court of Appeals for the Ninth Circuit

BRIEF AMICUS CURIAE OF APPLE COMPUTER, INC.
IN SUPPORT OF RESPONDENT

This amicus curiae brief is submitted in support of
Respondent. Written consent to file this amicus brief was
obtained from both parties and placed on file with the Clerk.

2

a

INTEREST OF APPLE COMPUTER, INC.
. AS AMICUS CURIAE

Apple Computer, Inc. is the plaintiff in an action for
infringement of the Apple copyrighted audiovisual works that
constitute the graphical user interface of Apple’s Macintosh
computers, Apple Computer, Inc. v. Microsoft Corp. & Hewlett-
Packard Co., No. C 88 20149 VRW (N.D. Cal. filed Mar. 17.
1988). After a series of rulings on court-invited motions,' the
parties, “recogniz[ing] that, in light of the prior rulings . . . it
would be in the best interest of judicial economy and efficiency
to obtain an early review of those rulings on appeal rather than
proceeding to trial," stipulated to the entry of a final summary
judgment in favor of defendants so that Apple "may notice and
prosecute an appeal therefrom." [May 23, 1993 Stipulation

11 1, 2.)

Defendants subsequently moved for an award of attorneys’
fees and costs under 17 U.S.C. § 505. The motions were denied
by the district court on the basis of the governing authorities,
including the ruling of the court of appeals under review here.
In so-ruling, the court commented that:

The Court recalls very well the action was initiated
in a context of copyright law concerning computers that
was dramatically different from that which exists now,
five years later.

When the action was begun the [Whelan] case, the
Broberbund case, various others, Suggested a very

, The reported decisions on the various motions filed in the case are at
709 F. Supp. 925 (N.D. Cal. 1989); 717 F. Supp. 1428 (N.D. Cal. 1989):
759 F. Supp. 1444 (N.D. Cal. 1991); 779 F. Supp. 133 (N.D. Cal. 1991); 799
F. Supp. 1006 (N.D. Cal. 1992).

3

broad-ranging and muscular interpretation of copyright
protection as it applies to certain computer software.

As time has gone on and other cases have come
forward, the legal environment has changed. . . . [T Jhe
current environment is a different one from that which
existed five years ago when the action was initiated.

. . . am convinced without any question that, in the
context of the highly uncertain environment in which
computers were regarded in the law with regard to
copyright protection, that the filing of this lawsuit was
most certainly not in bad faith. It was a considered and
thoughtful effort on the part of Apple to protect its
copyrights and protect very valuable intellectual
property, and that’s a very, very long way in my view
from anything that approaches bad faith.

Nor do I consider that the case was at any time
prosecuted in bad faith.

July 30, 1993 Tr. of Proceedings 34-36. However, the court
made it clear that:

In the event that the Supreme Court’s decision in
Fogerty results in a modification of the Ninth Circuit’s
rule and attorney fees are recoverable without a showing
of bad faith, the Court will entertain at an appropriate
time any motion that the parties may wish to bring to
recover fees.

July 30, 1993 Tr. of Proceedings 37. Accordingly, Apple has
an acute interest in the outcome of the appeal in this case.

4 o

Furthermore, Apple is a leading innovator in the fields of
computer programming, computer graphics and animation and,
more recently, media integraticn-{the creation of multimedia
products combining sound, video and animation artistries). The
legal protection of its creative works against misappropriation by
copiers is essential to the maintenance of its business. Apple
therefore has an abiding interest in pursuing, on an objectively
reasonable basis, infringement claims against the copiers who
seek to trade on the creative efforts of its employees, undeterred
by the risk of payment of a defendant’s attorneys’ fees if the case
is lost. It has a need to know with reasonable predictability that,
so long as it acts reasonably, it can enforce its copyrights
without the risk of bearing the extraordinary cost of both its own
and the defendant’s attorneys’ fees.

Summary of Argument

The Ninth Circuit rule that directs the exercise of discretion
under 17 U.S.C. § 505 to require denial of an attorneys’ fee
award against a losing plaintiff unless it appears that the action
was frivolous or brought in bad faith (hereinafter referred to as
“the Ninth Circuit rule") has a long history, with presumed
congressional approval by enactment of the 1976 Copyright Act.
That is the rule adopted by this Court and other federal courts in
interpreting substantially identical statutory provisions relating to
the enforcement of other federal laws. The rationale supporting
that rule--essentially to avoid deterring a copyright holder from
pursuing a justifiable infringement claim and thus to encourage
the creation of original copyrightable works--is sound.

The wisdom of the rule is especially evident with respect to
Suits to enforce copyrights protecting computer software. The
copying of computer code is easily disguised, making the
copying hard to discover and substantial similarity difficult to
demonstrate. Moreover, notwithstanding the congressional
directive that computer programs be protected as "literary

5

works" under the Copyright Act, resistance to that directive has
recently led to major revisions by some courts of the traditional
judicial approaches to adjudicating copyright infringement issues.
As illustrated in the Apple case, diminished protection has been
decreed even for such highly creative works as the audiovisual
works constituting computer graphical user interfaces. To add
to what the Apple trial judge described as that "highly uncertain
environment” the risk of a double expense for attorneys’ fees if
the case is lost cannot but deter the bringing of meritorious
claims and, eventually, adversely affect investment in innovative
creative works and the companies that produce them.

The creation of computer software is a highly individualized
endeavor. The software industry is composed in the main of
thousands of individuals and start-up companies employing only
a few individuals and possessing extremely limited resources.
The protection of their creative works obviously is essential to
their existence. There can be little doubt that the added risk of
being saddled with the payment of a defendant’s attorneys’ fees
in addition to its own attorneys’ fees would deter the bringing of
many meritorious suits by such entrepreneurs and would result
in a retrenchment in the number of software start-up enterprises.

None of the arguments presented on behalf of petitioner
Fogerty refutes the logic of that reasoning.

Categorizing the cases applying the Ninth Circuit rule as
employing a “dual” or “double” standard does not impair that
logic. This_case does not require consideration of the
appropriate circumstances for the denial of an attorneys’ fee
award against a losing defendant, but, if it did, the different
considerations disfavoring a copyright violator obviously provide
warrant for a freer award of attorneys’ fees to a winning
plaintiff.

6

In any event, contrary to the argument urged on behalf of
Fogerty, there does not appear to be any meaningful basis in
American copyright history or precedent for the radical adoption
of the British rule, awarding counsel fees as a matter of course
to the prevailing party.

The cases that have not adopted the Ninth Circuit rule have
nevertheless taken into account, in the case of a prevailing
defendant, whether the action was a reasonable assertion of a
colorable claim (together with other circumstances bearing on the
relative positions of the parties). Moreover, those cases (and
cases applying the Ninth Circuit approach as well) have not
automatically awarded fees to a prevailing plaintiff and instead
have denied awards against losing defendants who were innocent
infringers or otherwise not blameworthy.

Nor does the Hewlett-Packard claim that a prevailing
defendant "deserve[s]" an award because its opposition "serves
the public interest" bear scrutiny. First, the rewards of winning
an infringement case to a defendant who has emulated a
commercially successful innovative work created by others are
likely to be so great that defendants need no additional incentive
in those cases to litigate to the nth degree. Second, the record
shows that defendants so motivated have the means to utilize the
litigation process to their economic advantage whether they
eventually win or lose. Third, there are a great variety of ways
in which a defendant may prevail that render not the slightest
service to the public interest. Indeed, it is not unheard of that a
defendant may prevail in the district court by rulings that require
reversal on appeal. As appears below, all of the foregoing is
illustrated in the Apple case.

Additionally, the Ninth Circuit rule preserves the incentive
of an attorneys’ fees penalty against a plaintiff who has brought
an unfounded suit or proceeded in bad faith. The early

7

settlement of well founded suits should not be viewed as
necessarily opposed to the “public interest.”

Argument

I. THE NINTH CIRCUIT RULE IS WELL
ESTABLISHED WITH A LONG HISTORY AND SHOULD
BE PRESUMED TO HAVE RECEIVED CONGRESSIONAL
APPROVAL BY ENACTMENT OF THE COPYRIGHT ACT
OF 1976; IT ALSO SHOULD BE APPROVED AS
CONSISTENT WITH THE RULE ADOPTED BY THIS
COURT AND OTHER FEDERAL COURTS IN
INTERPRETING ESSENTIALLY IDENTICAL
STATUTORY PROVISIONS IN OTHER FEDERAL LAWS.

The Ninth Circuit rule has long been the settled rule
governing the award of attorneys’ fees under 17 U.S.C. § 505
against a losing plaintiff in the Second and Seventh Circuits as
well as in the Ninth Circuit and, in fact, is the rule adopted in
the majority of courts that have ruled on the question.’ It also
is the rule adopted by this Court and other federal courts in
interpreting essentially identical statutory provisions relating to

> E.g., Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 767
(2d Cir. 1991); Video Views, inc. v. Studio 21, Lid., 925 F.2d 1010, 1022 (7th
Cir.), cert. denied, 112 S. Ct. 181 (1991); Roth v. Pritikin, 787 F.2d $4. $7
(2d Cir. 1986).

> See, e.g., Reader's Digest Ass'n v. Conservative Digest, Inc., 821
F.2d 800, 809 (D.C. Cir. 1987); Flag Fables, Inc. v. Jean Ann’s Country
Flags & Crafts, Inc., 753 F. Supp. 1007, 1017 (D. Mass. 1990): of. Hartman
v. Hallmark Cards, Inc., 833 F.2d 117, 122-23 (8th Cir. 1987): Donald
Frederick Evans & Assocs. v. Continental Homes, Inc., 785 F.2d 897. 916-17
(11th Cir. 1986).

x
the enforcement of other federal laws.‘ It thus is entitled to

. Christiansburg Garment Co. v. EEOC, 434 U.S. 412, 422 (1978) ("a
plaintiff should not be assessed his opponent's attorney's fees unless a court
finds that his claim was frivolous, unreasonable, or groundless, or that the
plaintiff continued to litigate after it clearly became so”) (applying § 706(k) of
Title VII of the Civil Rights Act of 1964, 42 U.S.C. § 2000(e)-5S(k) (“the
court, im its discretion, may allow the prevailing party ... a reasonable
attorney's fee as part of the costs”)); Hughes v. Rowe, 449 U.S. 5, 14 (1980)
(“[t)he plaintiff's action must be meritless in the sense that it is groundless or
without foundation. The fact that a plaintiff may ultimately lose his case is not
in itself a sufficient justification for the assessment of fees”) (applying the Civil
Rights Act of 1964, 42 U.S.C. § 1988 (“the court, in its discretion, may allow
the prevailing party . . . a reasonable attorney's fee as part of the costs”)):
Pennsylvania v. Delaware Valley Citizens’ Council for Clean Air, 483 US.
711, 713 n.1 (1987) ("in awarding attorney's fees . . . the courts should follow
the principles and case law governing the award of such fees under 42 U.S.C.
§ 1988") (applying the Clean Air Act Amendments of 1970, 42 U.S.C.
§ 7604(¢) (“The Court, in issuing any final order in any action brought
pursuant to subsection (a) of this section, may award costs of litigation
(including reasonable attorney and expert witness fees) to any party, whenever
the court determines such award is appropriate”)); Ruckelshaus v. Sierra Club,
463 U.S. 680, 682 n.1 (1983) ("the interpretation of ‘appropriate’ in {the
Clean Air Act Amendments of 1970 fee provision] controls the construction of”
seventeen federal environmental laws) (applying the Clean Air Act
Amendments of 1970, 42 U.S.C. § 7607(f) (“the court . . . may award costs
of Itigation (including reasonable attorney and expert witnesses fees) whenever
it determines that such an award is appropriate”) and a series of similarly
worded environmental laws (Toxic Substances Control Act, 15 U.S.C. § 2618:
Endangered Species Act of 1973, 16 U.S.C. § 1540; Surface Mining Control
and Reclamation Act of 1977, 30 U.S.C. § 1270; Deep Seabed Hard Mineral
Resources Act, 30 U.S.C. § 1427; Clean Water Act, 33 U.S.C. § 1365:
Marine Protection, Research, and Sanctuaries Act of 1972, 33 U.S.C. § 1415:
Deepwater Port Act, 33 U.S.C. § 1515; Safe Drinking Water Act, 42 U.S.C.
§ 300)j-8; Noise Control Act, 42 U.S.C. § 4911; Emergy Policy and
Conservation Act, 42 U.S.C. § 6305; Powerplant and Industrial Fuel Use Aci.
42 U.S.C. § 8435; Ocean Thermal Energy Conversion Act of 1980, 42 U.S.C.
§ 9124; Outer Continental Shelf Lands Act Amendment of 1978, 43 U.S.C.
§ 1349)); Homeward Bound, Inc. v. Hissom Memorial Ctr.. 63 F.2d 1352.
1354 n.1 (10th Cir. 1992) (“[t}he language of [§ 794a(b)} i identical to the
Civil Rights Attorney's Fees Awards Act of 1976, 42 U.S.C. § 1988.
Accordingly, the standards for awarding fees under § 1988 are applicable to

9

respect not only as the majority view but also under the principle
that use of similar language to that used in other fee-shifting
Statutes should be taken as “‘a strong indication’” that the
Statutes "‘are to be interpreted alike.’”®

Moreover, it deserves special note that the statutory
provision providing for fee-shifting was among the provisions of
the Copyright Act of 1909 that were the focus of specific
attention in the studies leading to enactment of the present
Copyright Act of 1976° and, indeed, was one of the provisions
that was revised (making costs discretionary instead of

fee awards under § 794a(b)") (applying the Rehabilitation Act of 1973, 29
U.S.C. § 794a(b) (“In any action or proceeding . . . the court, in its discretion.
may allow the prevailing party . . . a reasonable attorney's fee as part of the
costs")); Sassower v. Field, 973 F.2d 75, 79 (2d Cir. 1992) (section 3613(c)(2)
“permits an award of fees to prevailing defendants only upon a showing that
the suit is ‘frivolous, unreasonable, or without foundation’”) (applying the Fair
Housing Act, 42 U.S.C. § 3613(c)(2) (“the court . . . , in its discretion, may
allow the prevailing party, other than the United States, a reasonable attorney's
fee and costs")), cert. denied, 113 S. Ct. 1879 (1993); Nemeroff v. Abelson,
620 F.2d 339, 350 (2d Cir. 1980) (“the minimum standard for an award of fees
... IS that set forth in Christiansburg Garment") (applying the Securities
Exchange Act of 1934, 15 U.S.C. § 78i(e) (“the court may, in its discretion,
- - . assess reasonable costs, including reasonable attorney's fees, against either
party litigant”).

* Independent Fed'n of Flight Anendants v. Zipes, 491 U.S. 754, 758
n.2 (1989); accord, e.g., Hensley v. Eckerhart, 461 U.S. 424, 433 n.7 (1983):
Northcross v. Board of Educ., 412 U.S. 427, 428 (1973).

* — See Report of the Register of Copyrights on the General Revision of
the U.S. Copyright Law, 87th Cong., ist Sess. 109 (H. Judiciary Comm. Print
1961) (“the Register’s Report"); Ralph S. Brown, Jr. et al., The Operation of
the Damage Provisions of the Copyright Law: An Exploratory Study, Study
No. 23, Subcomm. on Patents, Trademarks, and Copyrights of the Senate
Comm. on the Judiciary, 86th Cong., 2d Sess. 59 (Comm. Print 1960) ("the
Brown Report”); William S. Strauss, The Damage Provisions of the Copyright
Law, Study No. 22, 86th Cong., 2d Sess. | (Comm. Print 1960).

10

mandatory, conforming to the discretionary award of attorneys’
fees).’ At that time, it was well established that a winning
defendant usually was not awarded fees unless the action was
“synthetic, capricious or otherwise unreasonable,"* and that was
the rule cited in congressional reports.’ In the circumstances,
it is reasonable to presume, as a matter of statutory construction
and under the principle of stare decisis, that Congress approved
of the Ninth Circuit rule as it was explained to Congress. "°

” See Whelan Assocs. v. Jaslow Dental Lab., Inc., 609 F. Supp. 1325,
1329 (E.D. Pa. 1985), aff'd, 797 F.2d 1222 (3d Cir. 1986), cert. denied, 479
U.S. 1031 (1987), explaining that the Copyright Act of 1976 changed the
award of “full costs” to be discretionary rather than mandatory, as it had been
im the 1909 Act, 17 U.S.C. § 116.

. See, ¢.g., Cloth v. Hyman, 146 F. Supp. 185, 193 (S.D.N.Y. 1956),
reciting the prior “extensive judicial exposition” of the statute.

* The Brown Report specifically noted [at 85] that “courts do not
usually make an allowance [for fees] at all if an unsuccessful plainuff's claim
was not ‘synthetic, capricious or otherwise unreasonable,’ or if the losing
defendant raised real issues of fact or law” (quoting Cloth v. Hyman, 146 F.
Supp. 185, 193 (S.D.N.Y. 1956)). The Register’s Report [at 109] explained:

The discretionary power of the courts to require the losing party to
Pay ‘a reasonable attorney's fee’ is intended to discourage unfounded
Suits and frivolous defenses. The courts have generally denied
awards of attorney's fees where the losing party had solid grounds
for litigating his claim or defense. This discretionary power of the
courts is generally regarded as salutary, and we concur in this view.

© See Keene Corp. v. United States, 113 S. Ct. 2035, 2043 (1993)
(applying “the presumption that Congress was aware of these earlier judicial
interpretations and, in effect, adopted them"); Pierce v. Underwood, 487 US.
552, 567 (1988) (when “Congress reenacted a statute that had in fact been
given a consistent judicial interpretation . . . [sJuch a reenactment, of course.
generally includes the settled judicial interpretation"); Herman & MacLean v.
Huddleston, 459 U.S. 375, 384-86 (1983) (where Congress “enact{s] the ‘most
substantial and significant revision of this country’s Federal securities laws,’”
its decision to leave some provisions intact was clear evidence of an intent to
adopt the construction given those provisions by the courts); United States v.

1]

Il. THE NEED OF THE NINTH CIRCUIT RULE IS
ESPECIALLY ACUTE IN SUITS TO ENFORCE
COPYRIGHTS PROTECTING COMPUTER SOFTWARE.

The rationale of the Ninth Circuit rule, as explained by the
court of appeals below, is “to avoid chilling a copyright holder’s
incentive to sue on colorable claims, and thereby to give full
effect to the broad protection for copyrights intended by the
Copyright Act." Fantasy, Inc. v. Fogerty, 984 F.2d 1524, 1532
(9th Cir.), cert. granted, 113 S. Ct. 2992 (1993).'"' The
soundness of the rule is especially evident in suits to enforce
copyrights protecting computer software.

The copying of a computer program is relatively easy to
disguise. Thus, it is often difficult to ascertain, and even more
difficult to prove, the extent to which a program has been

Ryan, 284 U.S. 167, 174-75 (1931) (tax law reenacted without substantial
change “must be considered to have adopted the consistent interpretation” given
the prior law); cf. Lindahl v. Office of Personnel Mgmt., 470 U.S. 768, 782
(1985) (“the legislative history . . . demonstrates that Congress was indeed well
aware” of the prior judicia) interpretation).

'' See also Roth v. Pritikin, 787 F.2d 54, 57 (2d Cir. 1986); Diamond
v. Am-Law Publishing Corp., 745 F.2d 142, 148 (2d Cir. 1984): Folio
Impressions, Inc. v. Byer California, 937 F.2d 759, 767 (2d Cir. 1991); Rural
Tel. Serv. Co. v. Feist Publications Inc., 24 U.S.P.Q.2d (BNA) 1312, 1313
(D. Kan. 1992); Flag Fables, Inc. v. Jean Ann's Country Flags & Crafts, Inc..
753 F. Supp. 1007, 1017 (D. Mass. 1990); cf. Christiansburg Garment Co. v.
EEOC, 434 U.S. 412, 422 (1978) (interpreting § 706(k) of Title VII of the
Civil Rights Act of 1964 and explaining that “[t]o take the further step of
assessing attorney's fees against plaintiffs simply because they do not finally
prevail would substantially add to the risks inhering in most litigation and
would undercut the efforts of Congress to promote the vigorous enforcement
of the provisions of Title VII").

12

copied.'"? It is primarily for that reason that the parties in
interest have debated whether copyright protection should be
limited to the literal copying of computer code or instead extend
to protection of the structure, sequencing and organization of a
program, such as was accorded to the plaintiff's program in
Whelan Assocs. v. Jaslow Dental Lab., Inc., 797 F.2d 1222 (3d
Cir. 1986), cert. denied, 479 U.S. 1031 (1987)."

2 See 1 Richard L. Bernacchi et al., Bernacchi on Computer Law
§ 3.11.4, at 3-78 to -79 (1992) ("A competent programmer can, with a
minimum amount of time and effort, make a copy of a program look, at least
on the surface, completely unlike the original simply by changing such things
as labels and variable names, without making any substantive changes at all to
the logic, design, or structure of the original program. This is clearly the kind
of taking advantage of another's work that the copyright laws are designed to
protect against, and yet the required showing to prove infringement may be
very difficult to make"); see also Anthony L. Clapes et al., Silicon Epics and
Binary Bards: Determining the Proper Scope of Copyright Protection for
Computer Programs, 34 UCLA L. Rev. 1493, 1577-78 (1987); Michael D.
Scott, Computer Law § 3.78, at 3-76 to -77 (1989).

3 Whelan was cited with approval in Bull HN Info. Sys., Inc. v.
American Express Bank Lid., [1989-1990] Copyright L. Dec. (CCH) 4 26,555,
at 23,279 (S.D.N.Y. 1990); Pearl Sys., Inc. v. Competition Elecs., Inc., 8
U.S.P.Q.2d (BNA) 1520, 1524-25 (S.D. Fla. 1988); Digital Communications
Assocs. v. Softklone Distrib. Corp., 659 F. Supp. 449, 454-55 (N.D. Ga.
1987): and Broderbund Software, Inc. v. Unison World, Inc., 648 F. Supp.
1127, 1133 (N.D. Cal. 1986). See also Johnson Controls, Inc. v. Phoenix
Control Sys., 886 F.2d 1173, 1175 (9th Cir. 1989) (approving proof of an
infringement by reference to the nonliteral components of a program, including
its "structure, sequence and organization”); Manufacturers Technologies, Inc.
v. Cams, Inc., 706 F. Supp. 984, 994, 996 (D. Conn. 1989) (sequencing and
flow of plaintiff's screen displays constituted copyrightable expression); SAS
Inst., Inc. v. S&H Computer Sys., 605 F. Supp. 816, 830 (M.D. Tenn. 1985)
(copying of the organization and structure as well as specific lines of code).

In general, see Anthony L. Clapes, Software, Copyright, and Competition,
ch. 10, at 94-109 (1989). ‘

13

Acting in accordance with the directive by Congress in the
Software Copyright Act of 1980 to treat computer programs as
"literary works,"'* a number of courts have conscientiously
applied traditional copyright principles in computer program
cases.’ However, the emergence of software as a major
component of the computer industry has impressed everyone--not
least the opportunists that saw that the quickest, easiest road to
enormous wealth was to emulate as closely as the law would
allow the most commercially successful innovative works
developed by others'*--and the debate that preceded the 1980
enactment'’ has been renewed with vigor.'* Those who favor

‘* Pub. L. No. 96-517, § 10(a), 94 Stat. 3028 (1980) (codified as
amended at 17 U.S.C. § 101) (including a computer program within the
copyright category of literary works). See H.R. Rep. No. 1476, 94th Cong.,
2d Sess. 51, 54, reprinted in 1976 U.S.C.C.A.N. 5659.

The Act defines a “computer program” as “a set of statements or

_ Instructions to be used directly or indirectly in a computer in order to bring

about a certain result.” 17 U.S.C. § 101. Literary works are defined as
“works, other than audiovisual works, expressed in words, numbers, or other
verbal or numerical symbols or indicia, regardless of the nature of the materia!
objects, such as books, periodicals, manuscripts, phonorecords, film, tapes,
disks, or cards, in which they are embodied.” /d.

'S See Morton D. Goldberg & John F. Burleigh, Copyright Protection
for Computer Programs: is the Sky Falling?, 17 AIPLA Q.J. 294, 296 (1989).

‘© In 1984, the Chairman of Microsoft Corporation, incorporated in
1981, predicted that “the industry's new standard for operating systems would
be Microsoft's Windows . . . aimed at giving PC screens the friendly look of
the Apple Macintosh." Alan Deutschman, Bill Gates’ Next Challenge,
Fortune, Dec. 28, 1992, at 30, 31. The cited article reports Microsoft's
market value at the time--nine years after the introduction of Windows 1.0 (in
1985) and five years after introduction of Windows 2.03 (in 1987)--at $25
billion. Id.

"The congressional action followed the recommendations of the
congressionally established National Commission on New Technological Uses
of Copyrighted Works (CONTU) in a Final Report transmitted to the President

14

revision of the law have gained some judges as adherents who
have questioned the wisdom of protecting computer programs as
“literary works" and decreed major revisions of the traditional
judicial approaches to adjudicating copyright infringement
issues.'? The effect of the legal chaos may be seen in
microcosm in the different opinions over time by the trial judge
in the Apple case.” Thus, there-has been added to the inherent

on July 31, 1978, after three years of deliberations. A dissent by
Commissioner John Hersey contended that copyright protection for a computer
program was inappropriate (and perhaps unconstitutional) because, in its usable
form, a computer program was “a machine-control element, a mechanical
device,” analogous to a cam controlling a drill. CONTU Report at 27-29. The
majority of the Commission answered that “[p}Jrograms should no more be
considered machine parts than videotapes should be considered parts of
projectors or phonorecords parts of sound reproduction equipment” and “(t}hat
the words of a program are used ultimately in the implementation of a process
should in no way affect their copyrightability.” Jd. at 21.

‘8 See, in general, Anthony L. Clapes, Softwars--The Legal Battles for
Control of the Global Software Industry (1993), describing the conflicts
between the interests of “innovators” and “copiers.”

‘9 See, e.g., Computer Assocs. Int'l v. Altai, Inc., 982 F.2d 693, 712
(2d Cir. 1992); Sega Enters. Lid. v. Accolade, Inc., 977 F.2d 1510, 1527 (9th
Cir. 1992) (affording the video game programs involved in that case "a lower
degree of protection than more traditional literary works").

20 Apple’s complaint alleges that the graphical user interfaces of
Microsoft's Windows 2.03 and 3.0 and Hewlett-Packard’s New Wave products
are unauthorized derivative works of Apple’s copyrighted audiovisual works,
exceeding the scope of a 1985 license to Microsoft relating to Windows
Version 1.0 (of which Hewlett-Packard also claimed the benefit). It was
recognized that Apple’s unique user interface was one of Apple's most valuable
assets and was principally responsible for the phenomenal success of the
Macintosh computer, which became famous throughout the world for its
“distinctive user friendly” interface. 709 F. Supp. at 926; 759 F. Supp. at
1447. In the 1985 license, Microsoft acknowledged that “the visual displays
in [Microsoft Windows 1.0] ‘are derivative works of the visual displays
generated by Apple’s Lisa {«n earlier Apple computer} and Macintosh graphic
user interface programs.’” See 709 F. Supp. at 927.

15

difficulty of protecting software against willful misappropriation
the risk of what the Apple trial judge described as a "highly
uncertain [legal] environment."

This Court has noted that "the course of litigation is rarely
predictable,” that "seldom can a prospective plaintiff be sure of
ultimate success,” and that "[t]o take the further step of assessing
attorney’s fees against plaintiffs simply because they do not
finally prevail would substantially add to the risks inhering in
most litigation and would undercut the efforts of Congress to
promote the vigorous enforcement of the provisions of Title
VII." Christiansburg Garment, 434 U.S. at 422. The current
turmoil concerning the protection of computer programs (and
even computer audiovisual works) provides an_ instructive
example of that perceptive insight.

There can be little doubt that defendants’ later products were “strikingly
similar” to the Macintosh interface. Hewlett-Packard advertisements quoted
from various industry views emphasizing “the strong resemblance [of Hewlett~
Packard's NewWave] to the Macintosh desktop interface." (Emphasis supplied)
Among many similar observations by others, an early (1987) Microsoft review
of the Hewlett-Packard New Wave graphical user interface (sent to Microsoft's
“upper management executives") found that “the look and feel of the
[NewWave] user interface is strikingly similar [to the Macintosh Finder].”
(Emphasis supplied)

The trial judge originally recognized that defendants’ arguments attacking
Apple's copyrights “would, in effect, preclude copyright protection for all
pictorial works, which, if dissected, would be composed of a limited number
of geometric shapes.” Order of July 25, 1991 at 4. He also originally held
that, “[bjecause there ought to be copyright protection for an innovative
melding of elements from preexisting works, elements which have been deemed
‘unprotectible’ should not be eliminated prior to the. substantial similarity of
expression analysis.” 779 F. Supp. at 135-36. Nevertheless, after “filtering
out" the individual discrete graphic design “elements” of the Macintosh
interface in the manner taught in Computer Associates [799 F. Supp. 1006] and
making other restrictive rulings, he ruled that the only protection available to
Apple's work was limited to at most protection against “virtually identical”
copying.

16

The importance of that insight in the computer software
industry cannot be overestimated. Of the estimated 50,000
companies in the computer industry in 1991,”' it seems safe to
assume that most of those that still exist, and most of the
companies organized since 1991, are engaged in the production
of software” and that all but a few of today’s software
companies are relatively young start-up companies employing
only a few individuals and otherwise enjoying extremely limited
resources. One recently reported survey shows that the typical
software firm employs six people and generates approximately
$560,000 in annual revenues.” All software companies are
heavily dependent on the protection available for their
copyrighted works. As explained by Microsoft’s Chairman in an
essay written after the rendering of the decision in Apple
Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 (3d
Cir. 1983) (holding that Apple’s operating system programs
expressed only in object code and embedded in a read only
memory (ROM) semiconductor device were protectable under the
Copyright Act and that copying was not excused by defendant's
desire to achieve compatibility with application programs written
for Apple’s computer), cert. dismissed, 464 U.S. 1033 (1984):

[The ruling] may have saved the future of the United
States computer software industry... .

2} -Y. Siber, Remarks to the Annenberg Foundation, May 21, 1991, at

2 The 1987 Census of Service Industries showed 39,701 establishments
engaged in “[clomputer programming, data processing, and other computer
related services” of which 21,594 were engaged in “[c]omputer programming,
prepackaged software, and integrated systems design.” U.S. Department of
Commerce. 1987 Census of Service Industries, Table 3a, at US-19 (Nov.
1989).

2 William H. Gates, Letter to the Editor, InfoWorld, Aug. 16, 1993,
at 44.

17

The software industry is one of the nation’s fastest-
growing and most important leadership industries. The
primary reason that the United States continues to
dominate the computer business is because it has
consistently been at the forefront of software innovation.
In many ways, the future of the computer industry will
be governed by software development.

And without the copyright protection,

ee and growth in the software industry would
ae

Jou is only fair for companies that invest millions
of dollars in product research and development to

receive some return when they have a best-selling
product.

Imagine the disincentive to software development if
after months of work another company could come along
and copy your work and market it under its own
name. ... Without legal restraints on such copying,

companies like Apple could not afford t
state-of-the-art. ene

Smaller companies are especially reliant on court enforcement of
their copyrights.~ The imposition of any substantial added

24 . .
William H. Gates, Insurance for the Industry's Future, N.Y. Times

Sept. 25, 1983, § 3, at 2.
** It appears from The Recorder (the i

tt official newspaper for the United

States District Court for the Northern District of California) that there were 69

— cases filed in the San Francisco office of the Northern District of

rH from January 1992 to August 1993. Putting aside the 10 cases in

which Broadcast Music, Inc. was suing a restaurant or bar for jukebox

18

risk--and certainly the added risk of being required to pay a
defendant’s attorneys’ fees in addition to its own attorneys’ fees--
that would make such suits more difficult, problematical or
costly no doubt would adversely threaten the viability of those
smaller companies and eventually contract their number and the
investment capital and talent available for participation in the
inherently risky business of creating innovative software.”
Such a result would undercut in the most direct way the
advancement of "‘the large objectives’” of the Copyright Act
[Zipes, 491 U.S. at 758-59] and should not be contemplated
absent a clear and compelling overriding congressional order.”’

III. PETITIONER’S ARGUMENTS DO NOT REFUTE
OR IMPAIR THE REASONING SUPPORTING THE
NINTH CIRCUIT RULE.

Much of the argument presented on behalf of petitioner
consists of a pejorative suggestion that a “dual” or “double”

performance of music protected by copyrights held by members of BMI, all but
16 (roughly 75 percent) appeared to be cases in which the plaintiffs were either
individuals (17 cases) or small corporations with 20 or fewer employees and
less than $2 million in annual sales revenues (26 cases). Of the 8 cases that
could be identified as involving copyrights of computer programs, 6 of the
plaintiffs were either individuals or small corporations with fewer than 20
employees and less than $500,000 in annual sales revenue.

© As noted by a Vice-President of a leading software developer, "Most
software companies are small; if they don’t worry about being profitable, they
won't be here next year.” Patricia Keefe, Survey of Software Firms Taps
Industry's Hot Buttons, ComputerWorld, Nov. 12, 1990, at 117 (quoting Frank
Ingari, a Vice-President of Lotus Development Corp.).

7 It also is of interest that many believe that “[g]enerally smaller
companies are the most innovative.” PC Software Market Booming, Standard
& Poor's Industry Surv.: Computers Basic Analysis, Dec. 31, 1992, at C-107;
cf. F.M. Scherer, Innovation and Growth: Schumpeterian Perspectives 237
(1984).

19

—_——

rather than an “evenhanded” standard for treating with prevailing
defendants as compared with prevailing plaintiffs is per force
unjustified. However, analysis of the underlying considerations
and "‘the large objectives’” of the congressional enactment
demonstrates that whatever different treatment may be found in
different cases emanates from the different situations of a willful
copyright violator and a plaintiff who loses a suit that was
objectively reasonable when brought and prosecuted in good
faith. As this Court explained in Zipes, 491 U.S. at 762 (an
innocent intervenor not liable for the attorneys’ fees of an
original party), “[ojur cases have emphasized the crucial
connection between liability for violation of federal law and
liability for attorney’s fees under federal fee-shifting statutes" --
sharply differentiating the situation of a prevailing plaintiff and
a prevailing defendant, citing, inter alia, Christiansburg
Garment, 434 U.S. at 418, Newman v. Piggie Park Enters. , 390
U.S. 400, 402 (1968), and other cases applying the Newman
standard. See also Video Views, Inc. v. Studio 21, Ltd., 925
F.2d 1010, 1022 (7th Cir.), cert. denied, 112 S. Ct. 181 (1991);
cof. Thomas D. Rowe, Jr., The Legal Theory of Attorney Fee
Shifting: A Critical Overview, 1982 Duke L.J. 651 (examining
different rationale for different results in different situations,
suggesting that a plaintiff may be awarded fees to make him
whole while a defendant may be awarded fees only to protect
him from burdensome litigation having no legal or factual
basis).“ Particularly differentiating the cases of a successful

3 As Professor Rowe observes:

[A] superior claim or defense on the merits does not automatically
translate into superior equity on fees.

Id. at 655.

[T]he persuasive reason for making a successful plaintiff whole is
that he suffered a legal wrong appropriately remediable by
compensation. Our system does not regard bringing (or, for that

20

copyright suit plaintiff and a successful copyright suit defendant,
it may be noted that Congress has provided a variety of remedies
to a successful plaintiff with a view to making the plaintiff whole
and preventing further infringement;* Congress might have,
but did not, provide any direction to suggest that a poovelling
defendant was to be compensated or protected similarly.”

In any event, there is not any reason nor precedential
warrant for adoption of an automatic award rule such as
advocated on behalf of petitioner.

matter, defending) a losing case--without more--as the infliction of a
legal wrong.

Id. at 659. See also Breffort v. | Had a Ball Co., 271 F. Supp. 623, 627
(S.D.N.Y. 1967) (“The purpose of an award of counsel fees to a plaintiff is to
deter copyright infringement. In the case of a prevailing defendant, however,

prevention of ‘infringement is obviously not a factor; and if an award 1s to be
made at all, it reprsents a penalty imposed upon the plainuff for institution of
a baseless, frivolous, or unreasonable suit, or one instituted in bad faith”)

(citation omitted).

% 17U.S.C. §§ 502 (“Injunctions”); 503 (“Impounding and disposition
of infringing articles"); 504 ("Damages and profits”).

* — &. Christiansburg Garment, 434 U.S. at 418-19:

[A] moment's reflection reveals that there are at least two strong
equitable considerations counseling an attorney's fee award to a
prevailing Title VII plaintiff that are wholly absent in the case of a
prevailing Title VII defendant.

First, as emphasized so forcefully in-Piggie Park, the plaintff
is the chosen instrument of Congress to vindicate “a policy that
Congress considered of the highest priority.” 390 U.S., at 402.
Second, when a district court awards counsel fees to a prevailing
plaintiff, it is awarding them against a violator of federal law. As
the Court of Appeals clearly perceived, “these policy considerations
which support the award of fees to a prevailing plaintiff are not
present in the case of a prevailing defendant.” 550 F.2d at 951. A
successful defendant seeking counsel fees under § 706(k) must rely
on quite different equitable considerations.

21

Even those courts that have not explicitly adopted the Ninth
Circuit- rule nevertheless have considered, in the case of a
prevailing defendant, the blameworthiness of the losing plaintiff
and, among other factors bearing on the relative positions of the
parties, they have taken into account whether the action was a
reasonable assertion of a colorable claim.*!

4

See Rosciszewski v. Arete Assocs., Nos. 92-2122, 92-2390, 1993 WL
283213, at *8 (4th Cir. July 29, 1993) (district court should consider the
“motivation of the parties,” including “bad faith,” the “objective reasonableness
of the legal and factual positions advanced,” including “whether the positions
advanced by the parties were frivolous,” and the “‘need .. . to advance
considerations of compensation and deterrence’”; vacating award of fees to
prevailing defendants and remanding for findings under announced standard):
Hartman v. Hallmark Cards, Inc. , 833 F.2d 117, 123 (8th Cir. 1987) ("{uJnder
any of the standards that have been applied to the section 505 fee determina-
tion, the finding that (plaintiff's) claim was not baseless supports the district
court's determination not to award fees"); Sherry Mfg. Co. v. Towel King, 822
F.2d 1031, 1034 (11th Cir. 1987) (“the fact that a losing party has acted in
good faith or that his legal position had arguable merit will justify an exercise
of the district court's discretion in deciding not to award attorney's fees”:
vacating award of fees to prevailing defendant and remanding for articulation
of basis for award); Reader's Digest Ass'n v. Conservative Digest, Inc., 821
F.2d 800, 809 (D.C. Cir. 1987) (affirming denial of attorneys’ fees to
prevailing defendant because “although ultimately unsuccessful, [plaintiff s
claim] was not frivolous”); Donald Frederick Evans & Assocs. v. Continental
Homes, Inc., 785 F.2d 897, 916-17 (11th Cir. 1986) (affirming denial of fees
to prevailing defendant “where the plaintiff asserted colorable copyright claims
of the type which ‘section 505 is intended in part to encourage’”); Rural Tel.
Serv. Co. v. Feist Publications Inc., 24 U.S.P.Q.24 (BNA) 1312, 1313-14 (@.
Kan. 1992) (“a defendant in a copyright action will be awarded attorney's fees
only where the plaintiff's suit was frivolous, baseless, or prosecuted in bad
faith”; denying fees to prevailing defendant because, “while [plaintiff's]
dann tindiin de x ina ee
arguable merit”); Ss, Inc. v. Jean Ann's Country s
Inc., 753 F. Supp. 1007, 1017 (D. Mass. 1990) (a prevailing j= Aid
recover attorneys’ fees “only where plaintiff's suit was frivolous, baseless. or
prosecuted in bad faith"); Dean v. Burrows, 732 F. Supp. 816, 826-27 (E.D.
Tenn. 1989) (“awards to prevailing defendants are disfavored absent a frivolous
or bad-faith prosecution”; denying fees to prevailing defendants because “the
plaintiff [did not) pursue[} her prosecution of the [defendants] in bad faith: the

22

Also, those courts--and courts applying the Ninth Circuit rule

as well--have not automatically awarded fees even to a prevailing
plaintiff where the losing defendants were innocent infringers or
otherwise were not blameworthy. Illustratively, a Ninth Circuit
court stated:

[W]e do not believe Congress intended that the
prevailing plaintiff should be awarded attorney’s fees in
every case. Lieb v. Topstone Indus., Inc., 788 F.2d
151, 155-56 (3d Cir. 1986). Considerations which
justify the denial of fees may include (1) the presence of
a complex or novel issue of law that the defendant
litigates vigorously and in good faith, (2) the defendant's
Status as innocent, rather than willful or knowing,
infringer, (3) the plaintiff's prosecution of the case in
bad faith, and (4) the defendant’s good faith attempt to
avoid infringement. We do not intend by this recitation
to limit the factors to those mentioned above.

McCulloch v. Albert E. Price, Inc., 823 F.2d 316, 323 (9th Cir.
1987) (citations omitted).

action presented a genuine issue for the Court to resolve and was not,
therefore, frivolous”); Motta v. Samuel Weiser, Inc., 633 F. Supp. 32, 34 (D.
Me. 1980) (denying award of attorneys’ fees to prevailing defendant because
plaintiff had “succeeded in asserting a colorable, nonfrivolous claim and did
not act in bad faith in pursuing the action").

% See also Lieb; Roulo v. Russ Berrie & Co., 886 F.2d 931, 943 (7th
Cir. 1989) (award of fees to prevailing plaintiff is “inappropriate where the
infringement was not wilful”; affirming denial of fees to prevailing plaintiff),
cert. denied, 493 U.S. 1075 (1990); Warner Bros. v. Dae Rim Trading, Inc..,
877 F.2d 1120, 1127 (2d Cir. 1989) (plaintiffs were not entitled to fees where
“the defendants litigated in good faith against unreasonable demands for
damages and attorneys’ fees"); Applied Innovations, Inc. v. Regents of the
University of Minnesota, 876 F.2d 626, 638 (8th Cir. 1989) (“attorney's fees
should not be awarded to a prevailing plaintiff as a matter of course” ; affirming
denial of fees where “the litigation mvolved numerous complex or novel

23

Thus, both historical and current precedent serve to repudiate
the argument on behalf of Fogerty for adoption of a British-type
rule, awarding counsel fees as a matter of course to the

questions which defendant had litigated vigorously and in good faith"); Jobete
Music Co. v. Massey, 788 F. Supp. 262, 268 (M.D.N.C. 1992) ("The court
adopts the view that absent a showing of bad faith on the part of the defendant.
attorney's fees will not be awarded. The conduct of defendant was determined
not to be willful; hence, in the court's discretion, it denies the plaintiffs’
request for attorney's fees"); Educational Testing Serv. v. Miller, [1991-1992]
Copyright L. Dec. (CCH) { 26,841, at 24,925 (D.D.C. 1991) (because “[t}he
materials received by defendants had no copyright notice, and novel legal
issues were presented,” plaintiff was not “entitled to be awarded the special
costs and attorney's fees which may be awarded under the Copyright Act”);
Dae Han Video Prod. v. Dong San, Chun, 17 U.S.P.Q.2d (BNA) 1306, 1314
(E.D. Va. 1990) (four factors guide award of attorneys’ fees: °(1) the
presence of a complex or novel issue of law that the defendants litigate
vigorously and in good fait!i; (2) the defendants’ status as innocent infringers:
(3) the plaintiffs’ prosecution of the action in bad faith; and (4) the defendants’
good faith attempt to avoid infringement”; court denied attorneys’ fees to pre-
vailing plaintiff because the legal issue was “complex and litigated by the
defendants in good faith” and the defendants made “a good faith attempt to
avoid infringing on [plaintiff's] copyrights"); Dolori Fabrics, Inc. v. The
Limited, Inc., 662 F. Supp. 1347, 1357 (S.D.N.Y. 1987) (refusing to award
attorneys’ fees against an unintentional infringer, quoting the comment of
Professor ."immer that “‘an attorney's fee generally will be awarded only
where there is some element of moral blame against the losing party’”);
Whelan Assocs. v. Jaslow Dental Lab., Inc., 609 F. Supp. 1325, 1329-30
(E.D. Pa. 1985) (denying attorneys’ fees to prevailing plaintiff where
defendants, “relying in no small measure upon competent legal advice,
sincerely believed that they were legally entitled to take the actions which they
took"), aff'd, 797 F.2d 1222 (3d Cir. 1986), cert. denied, 479 U.S. 1031
(1987); Kepner-Tregoe, Inc. v. Carabio, 203 U.S.P.Q. (BNA) 124, 139 (E.D.
Mich. 1979) (quoting the comment of Professor Nimmer that “‘[a}n attorney's
fee . . . will be awarded only where there is some element of moral blame
against the losing party’"; court denied attorneys’ fees to prevailing plaintiff
because plaintiff's position was “highly technical,” the legal issue was
“complex and novel” and, “while there is perhaps some question as to the
blameworthiness of Defendants’ conduct, this does not tip the scales”).

24

prevailing party.’ Such a radical departure from the American
common law rule [see Alyeska Pipeline Serv. Co: v. Wilderness
Soc’y, 421 U.S. 240 (1975)] and the precedent of American
cases interpreting fee-shifting statutes would violate every
principle of stare decisis and statutory construction.

Nor does the Hewlett-Packard claim that a prevailing
defendant “deserve[s]" an award because its defeat of the
plaintiff's copyright claim may serve "the public interest" bear
scrutiny.

As noted [see supra note 16], the rewards of winning an
infringement case to a defendant who has emulated a
commercially successful software product are likely to be
enormous, providing all the incentive that is needed to promote
the most vigorous defensive litigation.

Moreover, as a practical matter, the tactics available to a
determined defendant together with the inherent difficulties of
proving both copying and the amount of damages (even where
everyone knows that there have been lost sales and lost profits)
provide added incentive for a defendant to litigate to the bitter
end in the hope of prevailing. As illustrated in the Apple case
(commenced in March 1988 immediately after examination of
Hewlett-Packard’s NewWave product, described by Hewlett-
Packard upon its introduction as "visually similar to the

3} It may be noted that even the British rule is subject to a qualification
that a prevailing defendant may be denied fees where there is evidence that the
defendant brought about the litigation or did something calculated to occasion
unnecessary litigation and expense or did some wrongful act in the course of
the transaction of which the plaintiff complains. See 1 The Supreme Court
Practice R. 3(3), at 1043 (Eng. 1992); see also Rowe, supra p. 19, at 655, 679
(critically examining the rationale supporting a rule of “general indemnity” and
showing that “the case for English-style general indemnity has appeared
surprisingly weak”).

25

Macintosh [but with more features]"), litigation can be delayed
and a jury trial avoided for years during which time the
defendant can achieve such success and the plaintiff made to
suffer such decline that the defendant must be counted as the
economic winner whether it wins or loses in the courtroom.

Additionally, there obviously are a great variety of ways in
which a defendant may prevail in a way that benefits no one else
or renders no public service of any kind. Hewlett-Packard’s
prime example of defeating protection for “computer-related
works that are functional in nature" [Hewlett-Packard Br. at 3]
is, indeed, based on a false premise.

First, an original work is not deprived of copyright
protection because it may serve a “functional” purpose. As this
Court has stated, there is "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 invalidates its
registration. We do not read such a limitation into the copyright
law."* As summarily stated by a leading scholar, "Protection
for computer programs and data bases is not affected by the fact
that they may aid or implement utilitarian articles.”™
Illustratively, a work may be copyrightable even though it is a
control program;* or a toy stuffed animal;*’ or a map or chart
(explicitly protected by the earliest United States copyright law

* Mazer v. Stein, 347 U.S. 201, 218 (1954) (upholding copyrights in
semivitreous china statuettes of dancing figures used as bases for table lamps).

*% William F. Patry, Latman's The Copyright Law 38 n.94 (6th ed.
1986).

* Johnson Controls, Inc. v. Phoenix Control Sys., 886 F.2d 1173 (9th
Cir. 1989).

— Aliotti v. R. Dakin & Co., 83) F.2d 898 (9th Cir. 1987).

26

[Act of May 31, 1790, 1 Stat. 124]);** or even a plate.” It is
virtually universaiiy recognized that “the mere fact that
functional concerns were influential does not establish [the lack
of protectible] copyrightable expression."“ That is the rule in
all countries subscribing to the Berne Convention.“

Second, the Hewlett-Packard argument is profoundly
mistaken in suggesting that computer-related works are not
“artistic works." [Hewlett-Packard Br. at 5] The evidence to
the contrary is abundant. The testimony of those most
knowledgeable about programming is eloquent in describing the
artistic nature of the endeavor.*’ The contributions to computer
programming of individual imagination and literary programming
style are virtually undeniable.*’ The vital contribution of

% ~——- United States v. Hamilton, 583 F.2d 448 (9th Cir. 1978).
% ~~ McCulloch v. Albert E. Price, Inc., 823 F.2d 316 (9th Cir. 1987).

“Lotus Dev. Corp. v. Borland Int'l, Inc., 788 F. Supp. 78, 97 (D.
Mass. 1992).

*! See the WIPO Guide to the Berne Convention 2-| (1978), explaining
that a work produced “may be produced ... with a merely utilitarian or
commercial aim, without this making any difference in the protection it
enjoys.”

® See, e.g., Frederick P. Brooks, Jr., The Mythical Man-Month*7
(1982) ("The programmer, like the poet, works only slightly removed from
pure thought-stuff. He builds his castles in the air, from air, creating by
exertion of the imagination”); Ben Shneiderman, Software Psychology 2 (1980)
(describing programming as having the “excitement and agony” of composing
symphonies or writing novels, explaining that "[p)rogramming is an intensely
human experience whose esthetics canno. be imitated or appreciated by mere
machines"). .

® See, e.g., Apple Computer, Inc. v. Mackintosh Computers Lid., 28
D.L.R.4th 178, 184 (Can. Fed. Ct. 1986):

27

aesthetic sensory appeal in computer programming (especially in
the composition of graphical user interfaces) is manifest. It is
not without point that a Microsoft Senior Vice-President wrote
to the Windows 3.0 Program Manager recommending the Apple
visual interface as "aesthetically pleasing" and commenting that
"[tJhe Mac’s AEQ (Aesthetic Quotient) has always been hirer
[sic] than the Windows.’" The designers of the Macintosh
interface indeed have testified that they sought to make their
work “as artistically appealing and as integrated as possible."

Moreover, Hewlett-Packard’s argument that computer-related
works "must be judged under the very different standards of the
Patent Law" [Hewlett-Packard Br. at 3-4] is equally wrong.
Copyrights and patents afford different protection for different
creations: Whereas copyright protects the expression contained
in some form of communication against copying, patent law
protects inventions (including the novel process steps that a
computer program directs a computer to perform) against any
use thereof, precluding any infringing use of the novel idea
itself. As Chief Judge Markey has explained:

Confusion may be avoided if it be realized that what is
at issue [in a patent case] is not the “program,” i.e., the

There is no doubt that computer programs are highly
individualistic in nature and contain a form of expression personal to
the individual programmer. No two programmers would ever write
a program in exactly the same way (except perhaps in the case of the
most simple program). Even the same programmer, after writing a
program and leaving it for some time, would not write the program
the same way on a second occasion. The sequence of instructions
would most certainly be different. The possibility of two
programmers creating identical programs, without copying was
compared by the defendants’ expert witness to the likelihood of a
monkey sitting at a typewriter producing Shakespeare.

c——-"—

28

software, but the process steps which the software
directs the computer to perform.“

In the last analysis, it must be kept in mind that a computer
program or screen display is nothing but a communication,
precisely the kind of work traditionally protected by copyright.
Cf. Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d
1240, 1251 (3d Cir. 1983) ("the medium is not the message"),
cert. dismissed, 464 U.S. 1033 (1984).

Lastly, it bears reminder that, in explaining the rule in
Christiansburg Garment, 434 U.S. at 420-21, the Court
emphasized that the rule does protect a winning defendant
appropriately by providing for an award of attorneys’ fees where
it appears that “the plaintiff's action was frivolous, unreasonable,
or without foundation, even though not brought in subjective bad
faith." Thus, even if, as Hewlett-Packard claims, the Ninth
Circuit rule promotes early settlement, that can only (or at least
mainly) be so where it appears that the plaintiff's claim is
objectively meritorious. At a time when the federal courts are
already heavily burdened, it cannot be well contended that a rule
that encourages the early settlement of such meritorious claims
is undesirable.

Conclusion

For the foregoing reasons, the judgment of the court of
appeals should be affirmed.

“ In re Geinovatch, 595 F.2d 32, 44 (C.C.P.A. 1979) (Markey, C.J..
dissenting). See Midway Mfg. Co. v. Artic Int'l, Inc., 704 F.2d 1009, 1012
(7th Cir.) ("Plaintiff claims copyrights in audiovisual works--the distinctive set
of images and sounds stored in its circuit boards. It does not claim copyrights
in the design of those circuit boards, so it matters not that those designs may
be patentable"), cert. denied, 464 U.S. 823 (1983).

;
}
4

29

September 8, 1993
Respectfully submitted,

Jack E. Brown

Brown & Bain, P.A.
2901 North Central Avenue
Post Office Box 400
Phoenix, Arizona 85001-0400
(602) 351-8000

Counsel of Record for Amicus
Apple Computer, Inc.

Of Counsel:

Joel W. Nomkin

Charles A. Blanchard

Antonio T. Viera
Brown & Bain, P.A.
2901 North Central Avenue
Post Office Box 400
Phoenix, Arizona 85001-0400
(602) 351-8000

Chris R. Ottenweller
Brown & Bain
600 Hansen Way
Palo Alto, California 94306
(415) 856-9411

Edward B. Stead
Vice President and General Counsel
Elizabeth Birch
Senior Litigation Counsel
Apple Computer, Inc.
20525 Mariani Avenue MS-38I
Cupertino, California 95014

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385013_0397%3A09. Public record. Not legal advice.