             LOTUS DEVELOPMENT CORPORATION, Plaintiff, Appellee, v.
               BORLAND INTERNATIONAL, INC., Defendant, Appellant.
 
                    LOTUS DEV. CORP. v. BORLAND INTL., INC.
 
                                  No. 93-2214
 
              UNITED STATES COURT OF APPEALS FOR THE FIRST CIRCUIT
 
                           1995 U.S. App. LEXIS 4618
 
                             March 9, 1995, Decided
 
 
PRIOR HISTORY: [*1] APPEAL FROM THE UNITED STATES DISTRICT COURT FOR THE
DISTRICT OF MASSACHUSETTS. Hon. Robert E. Keeton, U.S. District Judge.
 
COUNSEL: Gary L. Reback, with whom Peter N. Detkin, Michael Barclay,
Isabella E. Fu, Wilson Sonsini Goodrich & Rosati, Peter E. Gelhaar,
Katherine L. Parks, and Donnelly Conroy & Gelhaar, were on brief for
appellant.
 
Matthew P. Poppel, et. al, were on brief for Computer Scientists, amicus
curiae.
 
Dennis S. Karjala and Peter S. Menell on brief, amici curiae.
 
Jeffrey C. Cannon and Baker Keaton Seibel & Cannon were on brief for
Computer Software Industry Association, amicus curiae.
 
Laureen E. McGurk, David A. Rabin, Bryan G. Harrison and Morris Manning
& Martin were on brief for Chicago Computer Society, Diablo Users Group,
Danbury Area Computer Society, IBM AB Users Group, Kentucky-Indiana
Personal Computer Users Group, Long Island PC Users Group, Napa Valley
PC Users Group, Pacific Northwest PC Users Group, Palmetto Personal
Computer Club, Philadelphia Area Computer Society, Inc., Phoenix IBM PC
Users Group, Pinellas IBM PC Users Group, Quad Cities Computer Society,
Quattro Pro Users Group, Sacramento [*2] PC Users Group, San Francisco
PC Users Group, Santa Barbara PC Users Group, Twin Cities PC Users
Group, and Warner Robbins Personal Computer Association, amici curiae.
 
Diane Marie O'Malley and Hanson Bridgett Marcus Vlahos & Rudy were on
brief for Software Entrepreneurs' Forum, amicus curiae.
 
Peter M.C. Choy was on brief for American Committee for Interoperable
Systems, amicus curiae.
 
Howard B. Abrams, Howard C. Anawalt, Stephen R. Barnett, Ralph S. Brown,
Stephen L. Carter, Amy B. Cohen, Paul J. Heald, Peter A. Jaszi, John
A. Kidwell, Edmund W. Kitch, Roberta R. Kwall, David L. Lange, Marshall
Leaffer, Jessica D. Litman, Charles R. McManis, L. Ray Patterson, Jerome
H. Reichman, David A. Rice, Pamela Samuelson, David J. Seipp, David
E. Shipley, Lionel S. Sobel, Alfred C. Yen, and Diane L. Zimmerman were
on brief for Copyright Law Professors, amicus curiae.
 
Henry B. Gutman, with whom Kerry L. Konrad, Joshua H. Epstein, Kimberly
A. Caldwell, O'Sullivan Graev & Karabell, Thomas M. Lemberg, James
C. Burling, and Hale and Dorr, were on brief [*3] for appellee.
 
Morton David Goldberg, June M. Besek, David O. Carson, Jesse M. Feder,
Schwab Goldberg Price & Dannay, and Arthur R. Miller were on brief for
Apple Computer, Inc., Digital Equipment Corporation, International
Business Machines Corporation, and Xerox Corporation, amici curiae.
 
Jon A. Baumgarten, Proskauer Rose Goetz & Mendelsohn, and Robert
A. Gorman were on brief for Adobe Systems, Inc., Apple Computer, Inc.,
Computer Associates International, Inc., Digital Equipment Corporation,
and International Business Machines Corporation, amici curiae.
 
Herbert F. Schwartz, Vincent N. Palladino, Susan Progoff, Fish & Neave,
William J. Cheeseman, and Foley Hoag & Eliot, were on brief for Computer
and Business Equipment Manufacturers Association, amicus curiae.
 
JUDGES: Before Torruella, Chief Judge, Boudin and Stahl, Circuit Judges.
 
OPINIONBY: STAHL
 
OPINION: STAHL, Circuit Judge. This appeal requires us to decide whether
a computer menu command hierarchy is copyrightable subject matter. In
particular, we must decide whether, as the district court held,
plaintiff-appellee Lotus Development Corporation's copyright in Lotus
1-2-3, a computer spreadsheet [*4] program, was infringed by
defendant-appellant Borland International, Inc., when Borland copied the
Lotus 1-2-3 menu command hierarchy into its Quattro and Quattro Pro
computer spreadsheet programs. See Lotus Dev. Corp. v. Borland Int'l,
Inc., 788 F. Supp. 78 (D. Mass. 1992) ("Borland I"); Lotus
Dev. Corp. v. Borland Int'l, Inc., 799 F. Supp. 203 (D. Mass. 1992)
("Borland II"); Lotus Dev. Corp. v. Borland Int'l, Inc., 831
F. Supp. 202 (D. Mass. 1993) ("Borland III"); Lotus
Dev. Corp. v. Borland Int'l, Inc., 831 F. Supp. 223 (D. Mass. 1993)
("Borland IV").
 
   I.  
 
   Background  
 
Lotus 1-2-3 is a spreadsheet program that enables users to perform
accounting functions electronically on a computer. Users manipulate and
control the program via a series of menu commands, such as "Copy,"
"Print," and "Quit." Users choose commands either by highlighting them
on the screen or by typing their first letter. In all, Lotus 1-2-3 has
469 commands arranged into more than 50 menus and submenus.
 
Lotus 1-2-3, like many computer programs, allows [*5] users to write
what are called "macros." By writing a macro, a user can designate a
series of command choices with a single macro keystroke. Then, to
execute that series of commands in multiple parts of the spreadsheet,
rather than typing the whole series each time, the user only needs to
type the single pre-programmed macro keystroke, causing the program to
recall and perform the designated series of commands
automatically. Thus, Lotus 1-2-3 macros shorten the time needed to set
up and operate the program.
 
   Borland released its first Quattro program to the public in 1987,
after Borland's engineers had labored over its development for nearly
three years. Borland's objective was to develop a spreadsheet program
far superior to existing programs, including Lotus 1-2-3. In Borland's
words, "from the time of its initial release . . . Quattro included
enormous innovations over competing spreadsheet products."
 
   The district court found, and Borland does not now contest, that
Borland included in its Quattro and Quattro Pro version 1.0 programs "a
virtually identical copy of the entire 1-2-3 menu tree." Borland III,
831 F. Supp. at 212 (emphasis in original).  [*6] In so doing, Borland
did not copy any of Lotus's underlying computer code; it copied only the
words and structure of Lotus's menu command hierarchy. Borland included
the Lotus menu command hierarchy in its programs to make them compatible
with Lotus 1-2-3 so that spreadsheet users who were already familiar
with Lotus 1-2-3 would be able to switch to the Borland programs without
having to learn new commands or rewrite their Lotus macros.
 
   In its Quattro and Quattro Pro version 1.0 programs, Borland achieved
compatibility with Lotus 1-2-3 by offering its users an alternate user
interface, the "Lotus Emulation Interface." By activating the Emulation
Interface, Borland users would see the Lotus menu commands on their
screens and could interact with Quattro or Quattro Pro as if using Lotus
1-2-3, albeit with a slightly different looking screen and with many
Borland options not available on Lotus 1-2-3. In effect, Borland allowed
users to choose how they wanted to communicate with Borland's
spreadsheet programs: either by using menu commands designed by Borland,
or by using the commands and command structure used in Lotus 1-2-3
augmented by Borland-added commands.
 
   Lotus filed this action [*7] against Borland in the District of
Massachusetts on July 2, 1990, four days after a district court held
that the Lotus 1-2-3 "menu structure, taken as a whole -- including the
choice of command terms [and] the structure and order of those terms,"
was protected expression covered by Lotus's copyrights. Lotus
Dev. Corp. v. Paperback Software Int'l, 740 F. Supp. 37, 68, 70
(D. Mass. 1990) ("Paperback"). n1 Three days earlier, on the morning
after the Paperback decision, Borland had filed a declaratory judgment
action against Lotus in the Northern District of California, seeking a
declaration of non-infringement. On September 10, 1990, the district
court in California dismissed Borland's declaratory judgment action in
favor of this action.
 
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   n1 Judge Keeton presided over both the Paperback litigation and this case.  
 
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   Lotus and Borland filed cross motions for summary judgment; the
district court denied both motions on March 20, 1992, concluding that
"neither party's motion is supported [*8] by the record." Borland I, 788
F. Supp. at 80. The district court invited the parties to file renewed
summary judgment motions that would "focus their arguments more
precisely" in light of rulings it had made in conjunction with its
denial of their summary judgment motions. Id. at 82. Both parties filed
renewed motions for summary judgment on April 24, 1992. In its motion,
Borland contended that the Lotus 1-2-3 menus were not copyrightable as a
matter of law and that no reasonable trier of fact could find that the
similarity between its products and Lotus 1-2-3 was sufficient to
sustain a determination of infringement. Lotus contended in its motion
that Borland had copied Lotus 1-2-3's entire user interface and had
thereby infringed Lotus's copyrights.
 
On July 31, 1992, the district court denied Borland's motion and granted
Lotus's motion in part. The district court ruled that the Lotus menu
command hierarchy was copyrightable expression because
 
[a] very satisfactory spreadsheet menu tree can be constructed using
different commands and a different command structure from those of Lotus
1-2-3. In fact, Borland has constructed [*9] just such an alternate tree
for use in Quattro Pro's native mode. Even if one holds the arrangement
of menu commands constant, it is possible to generate literally millions
of satisfactory menu trees by varying the menu commands employed.
 
Borland II, 799 F. Supp. at 217. The district court demonstrated this by
offering alternate command words for the ten commands that appear in
Lotus's main menu. Id. For example, the district court stated that "the
'Quit' command could be named 'Exit' without any other modifications,"
and that "the 'Copy' command could be called 'Clone,' 'Ditto,'
'Duplicate,' 'Imitate,' 'Mimic,' 'Replicate,' and 'Reproduce,' among
others." Id. Because so many variations were possible, the district
court concluded that the Lotus developers' choice and arrangement of
command terms, reflected in the Lotus menu command hierarchy,
constituted copyrightable expression.
 
   In granting partial summary judgment to Lotus, the district court
held that Borland had infringed Lotus's copyright in Lotus 1-2-3:
 
As a matter of law, Borland's Quattro products infringe the Lotus 1-2-3
copyright because of (1) the extent of copying of the [*10] "menu
commands" and "menu structure" that is not genuinely disputed in this
case, (2) the extent to which the copied elements of the "menu commands"
and "menu structure" contain expressive aspects separable from the
functions of the "menu commands" and "menu structure," and (3) the scope
of those copied expressive aspects as an integral part of Lotus 1-2-3.
 
Borland II, 799 F. Supp. at 223 (emphasis in original). The court
nevertheless concluded that while the Quattro and Quattro Pro programs
infringed Lotus's copyright, Borland had not copied the entire Lotus
1-2-3 user interface, as Lotus had contended. Accordingly, the court
concluded that a jury trial was necessary to determine the scope of
Borland's infringement, including whether Borland copied the long
prompts n2 of Lotus 1-2-3, whether the long prompts contained expressive
elements, and to what extent, if any, functional constraints limited the
number of possible ways that the Lotus menu command hierarchy could have
been arranged at the time of its creation. See Borland III, 831
F. Supp. at 207. Additionally, the district court granted Lotus summary
judgment [*11] on Borland's affirmative defense of waiver, but not on
its affirmative defenses of laches and estoppel. Borland II, 799
F. Supp. at 222-23.
 
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   n2 Lotus 1-2-3 utilizes a two-line menu; the top line lists the
commands from which the user may choose, and the bottom line displays
what Lotus calls its "long prompts." The long prompts explain, as a sort
of "help text," what the highlighted menu command will do if
entered. For example, the long prompt for the "Worksheet" command
displays the submenu that the "Worksheet" command calls up; it reads
"Global, Insert, Delete, Column, Erase, Titles, Window, Status, Page."
The long prompt for the "Copy" command explains what function the "Copy"
command will perform: "Copy a cell or range of cells." The long prompt
for the "Quit" command reads, "End 1-2-3 session (Have you saved your
work?)."
 
   Prior to trial, the parties agreed to exclude the copying of the long
prompts from the case; Lotus agreed not to contend that Borland had
copied the long prompts, Borland agreed not to argue that it had not
copied the long prompts, and both sides agreed not to argue that the
issue of whether Borland had copied the long prompts was material to any
other issue in the case. See Borland III, 831 F. Supp. at 208.
 
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   Immediately following the district court's summary judgment decision,
Borland removed the Lotus Emulation Interface from its
products. Thereafter, Borland's spreadsheet programs no longer displayed
the Lotus 1-2-3 menus to Borland users, and as a result Borland users
could no longer communicate with Borland's programs as if they were
using a more sophisticated version of Lotus 1-2-3. Nonetheless,
Borland's programs continued to be partially compatible with Lotus
1-2-3, for Borland retained what it called the "Key Reader" in its
Quattro Pro programs. Once turned on, the Key Reader allowed Borland's
programs to understand and perform some Lotus 1-2-3 macros. n3 With the
Key Reader on, the Borland programs used Quattro Pro menus for display,
interaction, and macro execution, except when they encountered a slash
("/") key in a macro (the starting key for any Lotus 1-2-3 macro), in
which case they interpreted the macro as having been written for Lotus
1-2-3. Accordingly, people who wrote or purchased macros to shorten the
time needed to perform an operation in Lotus 1-2-3 could still use those
macros in Borland's programs. n4 The district court permitted Lotus to
file a supplemental complaint [*13] alleging that the Key Reader
infringed its copyright.
 
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   n3 Because Borland's programs could no longer display the Lotus menu
command hierarchy to users, the Key Reader did not allow debugging or
modification of macros, nor did it permit the execution of most
interactive macros.
 
   n4 See Borland IV, 831 F. Supp. at 226-27, for a more detailed
explanation of macros and the Key Reader.
 
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   The parties agreed to try the remaining liability issues without a
jury. The district court held two trials, the Phase I trial covering all
remaining issues raised in the original complaint (relating to the
Emulation Interface) and the Phase II trial covering all issues raised
in the supplemental complaint (relating to the Key Reader). At the Phase
I trial, there were no live witnesses, although considerable testimony
was presented in the form of affidavits and deposition excerpts. The
district court ruled upon evidentiary objections counsel interposed. At
the Phase II trial, there were two live witnesses, [*14] each of whom
demonstrated the programs for the district court.
 
   After the close of the Phase I trial, the district court permitted
Borland to amend its answer to include the affirmative defense of "fair
use." Because Borland had presented all of the evidence supporting its
fair-use defense during the Phase I trial, but Lotus had not presented
any evidence on fair use (as the defense had not been raised before the
conclusion of the Phase I trial), the district court considered Lotus's
motion for judgment on partial findings of fact. See
Fed. R. Civ. P. 52(c). The district court held that Borland had failed
to show that its use of the Lotus 1-2-3 menu command hierarchy in its
Emulation Interface was a fair use. See Borland III, 831 F. Supp. at
208.
 
   In its Phase I-trial decision, the district court found that "each of
the Borland emulation interfaces contains a virtually identical copy of
the 1-2-3 menu tree and that the 1-2-3 menu tree is capable of a wide
variety of expression." Borland III, 831 F. Supp. at 218. The district
court also rejected Borland's affirmative defenses of laches and
estoppel. Id. at 218-23.  [*15]
 
   In its Phase II-trial decision, the district court found that
Borland's Key Reader file included "a virtually identical copy of the
Lotus menu tree structure, but represented in a different form and with
first letters of menu command names in place of the full menu command
names." Borland IV, 831 F. Supp. at 228. In other words, Borland's
programs no longer included the Lotus command terms, but only their
first letters. The district court held that "the Lotus menu structure,
organization, and first letters of the command names . . . constitute
part of the protectable expression found in [Lotus 1-2-3]." Id. at
233. Accordingly, the district court held that with its Key Reader,
Borland had infringed Lotus's copyright. Id. at 245. The district court
also rejected Borland's affirmative defenses of waiver, laches,
estoppel, and fair use. Id. at 235-45. The district court then entered a
permanent injunction against Borland, id. at 245, from which Borland
appeals.
 
   This appeal concerns only Borland's copying of the Lotus menu command
hierarchy [*16] into its Quattro programs and Borland's affirmative
defenses to such copying. Lotus has not cross-appealed; in other words,
Lotus does not contend on appeal that the district court erred in
finding that Borland had not copied other elements of Lotus 1-2-3, such
as its screen displays.
 
   II.  
 
Discussion  
 
On appeal, Borland does not dispute that it factually copied the words
and arrangement of the Lotus menu command hierarchy. Rather, Borland
argues that it "lawfully copied the unprotectable menus of Lotus 1-2-3."
Borland contends that the Lotus menu command hierarchy is not
copyrightable because it is a system, method of operation, process, or
procedure foreclosed from protection by 17 U.S.C. @ 102(b). Borland also
raises a number of affirmative defenses.
 
A. Copyright Infringement Generally  
 
To establish copyright infringement, a plaintiff must prove "(1)
ownership of a valid copyright, and (2) copying of constituent elements
of the work that are original." Feist Publications, Inc. v. Rural
Tel. Serv. Co., 499 U.S. 340, 361 (1991); see also Data
Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1160 n.19 (1st
Cir. 1994); [*17] Concrete Mach. Co. v. Classic Lawn Ornaments, Inc.,
843 F.2d 600, 605 (1st Cir. 1988). To show ownership of a valid
copyright and therefore satisfy Feist's first prong, a plaintiff must
prove that the work as a whole is original and that the plaintiff
complied with applicable statutory formalities. See Engineering
Dynamics, Inc. v. Structural Software, Inc., 26 F.3d 1335, 1340 (5th
Cir. 1994). "In judicial proceedings, a certificate of copyright
registration constitutes prima facie evidence of copyrightability and
shifts the burden to the defendant to demonstrate why the copyright is
not valid." Bibbero Sys., Inc. v. Colwell Sys., Inc., 893 F.2d 1104,
1106 (9th Cir. 1990); see also 17 U.S.C. @ 410(c); Folio Impressions,
Inc. v. Byer California, 937 F.2d 759, 763 (2d Cir. 1991) (presumption
of validity may be rebutted).
 
   To show actionable copying and therefore satisfy Feist's second
prong, a plaintiff must first prove that the alleged infringer copied
plaintiff's copyrighted work as a factual [*18] matter; to do this, he
or she may either present direct evidence of factual copying or, if that
is unavailable, evidence that the alleged infringer had access to the
copyrighted work and that the offending and copyrighted works are so
similar that the court may infer that there was factual copying (i.e.,
probative similarity). Engineering Dynamics, 26 F.3d at 1340; see also
Concrete Mach., 843 F.2d at 606. The plaintiff must then prove that the
copying of copyrighted material was so extensive that it rendered the
offending and copyrighted works substantially similar. See Engineering
Dynamics, 26 F.3d at 1341.
 
   In this appeal, we are faced only with whether the Lotus menu command
hierarchy is copyrightable subject matter in the first instance, for
Borland concedes that Lotus has a valid copyright in Lotus 1-2-3 as a
whole n5 and admits to factually copying the Lotus menu command
hierarchy. As a result, this appeal is in a very different posture from
most copyright-infringement cases, for copyright infringement generally
turns on whether the defendant has copied protected expression as a
factual [*19] matter. Because of this different posture, most
copyright-infringement cases provide only limited help to us in deciding
this appeal. This is true even with respect to those
copyright-infringement cases that deal with computers and computer
software.
 
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   n5 Computer programs receive copyright protection as "literary
works." See 17 U.S.C. @ 102(a)(1) (granting protection to "literary
works") and 17 U.S.C. @ 101 (defining "literary works" as "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, phonorecords, film, tapes, disks, or cards, in which
they are embodied" (emphasis added)); see also H.R. Rep. No. 1476, 94th
Cong., 2d Sess. 54 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5667
("The term 'literary works' . . . includes computer data bases, and
computer programs to the extent that they incorporate authorship in the
programmer's expression of original ideas, as distinguished from the
ideas themselves.").
 
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[*20]     

B. Matter of First Impression  
 
Whether a computer menu command hierarchy constitutes copyrightable
subject matter is a matter of first impression in this court. While some
other courts appear to have touched on it briefly in dicta, see, e.g.,
Autoskill, Inc. v. National Educ. Support Sys., Inc., 994 F.2d 1476,
1495 n.23 (10th Cir.), cert. denied, 114 S. Ct. 307 (1993), we know of
no cases that deal with the copyrightability of a menu command hierarchy
standing on its own (i.e., without other elements of the user interface,
such as screen displays, in issue). Thus we are navigating in uncharted
waters.
 
   Borland vigorously argues, however, that the Supreme Court charted
our course more than 100 years ago when it decided Baker v. Selden, 101
U.S. 99 (1879). In Baker v. Selden, the Court held that Selden's
copyright over the textbook in which he explained his new way to do
accounting did not grant him a monopoly on the use of his accounting
system. n6 Borland argues:
 
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   n6 Selden's system of double-entry bookkeeping is the now
almost-universal T-accounts system.
 
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[*21]     
 
The facts of Baker v. Selden, and even the arguments advanced by the
parties in that case, are identical to those in this case. The only
difference is that the "user interface" of Selden's system was
implemented by pen and paper rather than by computer.
 
To demonstrate that Baker v. Selden and this appeal both involve
accounting systems, Borland even supplied this court with a video that,
with special effects, shows Selden's paper forms "melting" into a
computer screen and transforming into Lotus 1-2-3.
 
   We do not think that Baker v. Selden is nearly as analogous to this
appeal as Borland claims. Of course, Lotus 1-2-3 is a computer
spreadsheet, and as such its grid of horizontal rows and vertical
columns certainly resembles an accounting ledger or any other paper
spreadsheet. Those grids, however, are not at issue in this appeal for,
unlike Selden, Lotus does not claim to have a monopoly over its
accounting system. Rather, this appeal involves Lotus's monopoly over
the commands it uses to operate the computer. Accordingly, this appeal
is not, as Borland contends, "identical" to Baker v. Selden.
 
C. Altai
 
Before we analyze whether the Lotus [*22] menu command hierarchy is a
system, method of operation, process, or procedure, we first consider
the applicability of the test the Second Circuit set forth in Computer
Assoc. Int'l, Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992). n7 The
Second Circuit designed its Altai test to deal with the fact that
computer programs, copyrighted as "literary works," can be infringed by
what is known as "nonliteral" copying, which is copying that is
paraphrased or loosely paraphrased rather than word for word. See id. at
701 (citing nonliteral-copying cases); see also 3 Melville B. Nimmer &
David Nimmer, Nimmer on Copyright @ 13.03[A][1] (1993). When faced with
nonliteral-copying cases, courts must determine whether similarities are
due merely to the fact that the two works share the same underlying idea
or whether they instead indicate that the second author copied the first
author's expression. The Second Circuit designed its Altai test to deal
with this situation in the computer context, specifically with whether
one computer program copied nonliteral expression from another program's
code. 

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   n7 We consider the Altai test because both parties and many of the
amici focus on it so heavily. Borland, in particular, is highly critical
of the district court for not employing the Altai test. Borland does
not, however, indicate how using that test would have been dispositive
in Borland's favor. Interestingly, Borland appears to contradict its own
reasoning at times by criticizing the applicability of the Altai test.
 
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[*23]    
 
   The Altai test involves three steps: abstraction, filtration, and
comparison. The abstraction step requires courts to "dissect the
allegedly copied program's structure and isolate each level of
abstraction contained within it." Altai, 982 F.2d at 707. This step
enables courts to identify the appropriate framework within which to
separate protectable expression from unprotected ideas. Second, courts
apply a "filtration" step in which they examine "the structural
components at each level of abstraction to determine whether their
particular inclusion at that level was 'idea' or was dictated by
considerations of efficiency, so as to be necessarily incidental to that
idea; required by factors external to the program itself; or taken from
the public domain." Id. Finally, courts compare the protected elements
of the infringed work (i.e., those that survived the filtration
screening) to the corresponding elements of the allegedly infringing
work to determine whether there was sufficient copying of protected
material to constitute infringement. Id. at 710.
 
   In the instant appeal, we are not confronted with alleged nonliteral
[*24] copying of computer code. Rather, we are faced with Borland's
deliberate, literal copying of the Lotus menu command hierarchy. Thus,
we must determine not whether nonliteral copying occurred in some
amorphous sense, but rather whether the literal copying of the Lotus
menu command hierarchy constitutes copyright infringement.
 
   While the Altai test may provide a useful framework for assessing the
alleged nonliteral copying of computer code, we find it to be of little
help in assessing whether the literal copying of a menu command
hierarchy constitutes copyright infringement. In fact, we think that the
Altai test in this context may actually be misleading because, in
instructing courts to abstract the various levels, it seems to encourage
them to find a base level that includes copyrightable subject matter
that, if literally copied, would make the copier liable for copyright
infringement. n8 While that base (or literal) level would not be at
issue in a nonliteral-copying case like Altai, it is precisely what is
at issue in this appeal. We think that abstracting menu command
hierarchies down to their individual word and menu levels and then
filtering idea from expression at [*25] that stage, as both the Altai
and the district court tests require, obscures the more fundamental
question of whether a menu command hierarchy can be copyrighted at
all. The initial inquiry should not be whether individual components of
a menu command hierarchy are expressive, but rather whether the menu
command hierarchy as a whole can be copyrighted. But see Gates Rubber
Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823 (10th Cir. 1993) (endorsing
Altai's abstraction-filtration-comparison test as a way of determining
whether "menus and sorting criteria" are copyrightable).
 
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   n8 We recognize that Altai never states that every work contains a
copyrightable "nugget" of protectable expression. Nonetheless, the
implication is that for literal copying, "it is not necessary to
determine the level of abstraction at which similarity ceases to consist
of an 'expression of ideas,' because literal similarity by definition is
always a similarity as to the expression of ideas." 3 Melville B. Nimmer
& David Nimmer, Nimmer on Copyright @ 13.03[A](2) (1993).
 
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - - 

[*26]

     D. The Lotus Menu Command Hierarchy: A "Method of Operation"  
 
Borland argues that the Lotus menu command hierarchy is uncopyrightable
because it is a system, method of operation, process, or procedure
foreclosed from copyright protection by 17 U.S.C. @ 102(b). Section
102(b) states: "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." Because we conclude that the Lotus menu command hierarchy is
a method of operation, we do not consider whether it could also be a
system, process, or procedure.
 
   We think that "method of operation," as that term is used in @
102(b), refers to the means by which a person operates something,
whether it be a car, a food processor, or a computer. Thus a text
describing how to operate something would not extend copyright
protection to the method of operation itself; other people would be free
to employ that method and to describe it in their own words. Similarly,
if a new method of operation is [*27] used rather than described, other
people would still be free to employ or describe that method.
 
   We hold that the Lotus menu command hierarchy is an uncopyrightable
"method of operation." The Lotus menu command hierarchy provides the
means by which users control and operate Lotus 1-2-3. If users wish to
copy material, for example, they use the "Copy" command. If users wish
to print material, they use the "Print" command. Users must use the
command terms to tell the computer what to do. Without the menu command
hierarchy, users would not be able to access and control, or indeed make
use of, Lotus 1-2-3's functional capabilities.
 
   The Lotus menu command hierarchy does not merely explain and present
Lotus 1-2-3's functional capabilities to the user; it also serves as the
method by which the program is operated and controlled. The Lotus menu
command hierarchy is different from the Lotus long prompts, for the long
prompts are not necessary to the operation of the program; users could
operate Lotus 1-2-3 even if there were no long prompts. n9 The Lotus
menu command hierarchy is also different from the Lotus screen displays,
for users need not "use" any expressive aspects of the screen displays
[*28] in order to operate Lotus 1-2-3; because the way the screens look
has little bearing on how users control the program, the screen displays
are not part of Lotus 1-2-3's "method of operation." n10 The Lotus menu
command hierarchy is also different from the underlying computer code,
because while code is necessary for the program to work, its precise
formulation is not. In other words, to offer the same capabilities as
Lotus 1-2-3, Borland did not have to copy Lotus's underlying code (and
indeed it did not); to allow users to operate its programs in
substantially the same way, however, Borland had to copy the Lotus menu
command hierarchy. Thus the Lotus 1-2-3 code is not a uncopyrightable
"method of operation." n11
 
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -  
 
   n9 As the Lotus long prompts are not before us on appeal, we take no
position on their copyrightability, although we do note that a strong
argument could be made that the brief explanations they provide "merge"
with the underlying idea of explaining such functions. See Morrissey
v. Procter & Gamble Co., 379 F.2d 675, 678-79 (1st Cir. 1967) (when the
possible ways to express an idea are limited, the expression "merges"
with the idea and is therefore uncopyrightable; when merger occurs,
identical copying is permitted).  [*29]
 
   n10 As they are not before us on appeal, we take no position on
whether the Lotus 1-2-3 screen displays constitute original expression
capable of being copyrighted.
 
   n11 Because the Lotus 1-2-3 code is not before us on appeal, we take
no position on whether it is copyrightable. We note, however, that
original computer codes generally are protected by copyright. See, e.g.,
Altai, 982 F.2d at 702 ("It is now well settled that the literal
elements of computer programs, i.e., their source and object codes, are
the subject of copyright protection.") (citing cases).
 
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -  
 
   The district court held that the Lotus menu command hierarchy, with
its specific choice and arrangement of command terms, constituted an
"expression" of the "idea" of operating a computer program with commands
arranged hierarchically into menus and submenus. Borland II, 799
F. Supp. at 216. Under the district court's reasoning, Lotus's decision
to employ hierarchically arranged command terms to operate its program
could not foreclose its competitors from also employing [*30]
hierarchically arranged command terms to operate their programs, but it
did foreclose them from employing the specific command terms and
arrangement that Lotus had used. In effect, the district court limited
Lotus 1-2-3's "method of operation" to an abstraction.
 
   Accepting the district court's finding that the Lotus developers made
some expressive choices in choosing and arranging the Lotus command
terms, we nonetheless hold that that expression is not copyrightable
because it is part of Lotus 1-2-3's "method of operation." We do not
think that "methods of operation" are limited to abstractions; rather,
they are the means by which a user operates something. If specific words
are essential to operating something, then they are part of a "method of
operation" and, as such, are unprotectable. This is so whether they must
be highlighted, typed in, or even spoken, as computer programs no doubt
will soon be controlled by spoken words.
 
   The fact that Lotus developers could have designed the Lotus menu
command hierarchy differently is immaterial to the question of whether
it is a "method of operation." In other words, our initial inquiry is
not whether the Lotus menu command hierarchy incorporates [*31] any
expression. n12 Rather, our initial inquiry is whether the Lotus menu
command hierarchy is a "method of operation." Concluding, as we do, that
users operate Lotus 1-2-3 by using the Lotus menu command hierarchy, and
that the entire Lotus menu command hierarchy is essential to operating
Lotus 1-2-3, we do not inquire further whether that method of operation
could have been designed differently. The "expressive" choices of what
to name the command terms and how to arrange them do not magically
change the uncopyrightable menu command hierarchy into copyrightable
subject matter.
 
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -  
 
   n12 We think that the Altai test would contemplate this being the initial inquiry.  
 
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -  
 
   Our holding that "methods of operation" are not limited to mere
abstractions is bolstered by Baker v. Selden. In Baker, the Supreme
Court explained that
 
the teachings of science and the rules and methods of useful art have
their final end in application and use; and this application and use are
what the public derive from the publication of [*32] a book which
teaches them. . . . The description of the art in a book, though
entitled to the benefit of copyright, lays no foundation for an
exclusive claim to the art itself. The object of the one is explanation;
the object of the other is use. The former may be secured by
copyright. The latter can only be secured, if it can be secured at all,
by letters-patent.
 
Baker v. Selden, 101 U.S. at 104-05. Lotus wrote its menu command
hierarchy so that people could learn it and use it. Accordingly, it
falls squarely within the prohibition on copyright protection
established in Baker v. Selden and codified by Congress in @ 102(b).
 
   In many ways, the Lotus menu command hierarchy is like the buttons
used to control, say, a video cassette recorder ("VCR"). A VCR is a
machine that enables one to watch and record video tapes. Users operate
VCRs by pressing a series of buttons that are typically labelled
"Record, Play, Reverse, Fast Forward, Pause, Stop/Eject." That the
buttons are arranged and labeled does not make them a "literary work,"
nor does it make them an "expression" of the abstract "method of
operating" a VCR via a set of labeled buttons.  [*33] Instead, the
buttons are themselves the "method of operating" the VCR.
 
   When a Lotus 1-2-3 user chooses a command, either by highlighting it
on the screen or by typing its first letter, he or she effectively
pushes a button. Highlighting the "Print" command on the screen, or
typing the letter "P," is analogous to pressing a VCR button labeled
"Play."
 
   Just as one could not operate a buttonless VCR, it would be
impossible to operate Lotus 1-2-3 without employing its menu command
hierarchy. Thus the Lotus command terms are not equivalent to the labels
on the VCR's buttons, but are instead equivalent to the buttons
themselves. Unlike the labels on a VCR's buttons, which merely make
operating a VCR easier by indicating the buttons' functions, the Lotus
menu commands are essential to operating Lotus 1-2-3. Without the menu
commands, there would be no way to "push" the Lotus buttons, as one
could push unlabeled VCR buttons. While Lotus could probably have
designed a user interface for which the command terms were mere labels,
it did not do so here. Lotus 1-2-3 depends for its operation on use of
the precise command terms that make up the Lotus menu command hierarchy.
 
One might argue that [*34] the buttons for operating a VCR are not
analogous to the commands for operating a computer program because VCRs
are not copyrightable, whereas computer programs are. VCRs may not be
copyrighted because they do not fit within any of the @ 102(a)
categories of copyrightable works; the closest they come is "sculptural
work." Sculptural works, however, are subject to a "useful-article"
exception whereby "the design of a useful article . . . shall be
considered a pictorial, graphic, or sculptural work only if, and only to
the extent that, such design incorporates pictorial, graphic, or
sculptural features that can be identified separately from, and are
capable of existing independently of, the utilitarian aspects of the
article." 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." Id. Whatever
expression there may be in the arrangement of the parts of a VCR is not
capable of existing separately from the VCR itself, so an ordinary VCR
would not be copyrightable.
 
   Computer programs, unlike VCRs, are copyrightable as "literary [*35]
works." 17 U.S.C. @ 102(a). Accordingly, one might argue, the "buttons"
used to operate a computer program are not like the buttons used to
operate a VCR, for they are not subject to a useful-article
exception. The response, of course, is that the arrangement of buttons
on a VCR would not be copyrightable even without a useful-article
exception, because the buttons are an uncopyrightable "method of
operation." Similarly, the "buttons" of a computer program are also an
uncopyrightable "method of operation."
 
   That the Lotus menu command hierarchy is a "method of operation"
becomes clearer when one considers program compatibility. Under Lotus's
theory, if a user uses several different programs, he or she must learn
how to perform the same operation in a different way for each program
used. For example, if the user wanted the computer to print material,
then the user would have to learn not just one method of operating the
computer such that it prints, but many different methods. We find this
absurd. The fact that there may be many different ways to operate a
computer program, or even many different ways to operate a computer
program using a set of hierarchically [*36] arranged command terms, does
not make the actual method of operation chosen copyrightable; it still
functions as a method for operating the computer and as such is
uncopyrightable.
 
   Consider also that users employ the Lotus menu command hierarchy in
writing macros. Under the district court's holding, if the user wrote a
macro to shorten the time needed to perform a certain operation in Lotus
1-2-3, the user would be unable to use that macro to shorten the time
needed to perform that same operation in another program. Rather, the
user would have to rewrite his or her macro using that other program's
menu command hierarchy. This is despite the fact that the macro is
clearly the user's own work product. We think that forcing the user to
cause the computer to perform the same operation in a different way
ignores Congress's direction in @ 102(b) that "methods of operation" are
not copyrightable. That programs can offer users the ability to write
macros in many different ways does not change the fact that, once
written, the macro allows the user to perform an operation
automatically. As the Lotus menu command hierarchy serves as the basis
for Lotus 1-2-3 macros, the Lotus menu command hierarchy [*37] is a
"method of operation."
 
   In holding that expression that is part of a "method of operation"
cannot be copyrighted, we do not understand ourselves to go against the
Supreme Court's holding in Feist. In Feist, the Court explained:
 
The primary objective of copyright is not to reward the labor of
authors, but to promote the Progress of Science and useful Arts. To this
end, copyright assures authors the right to their original expression,
but encourages others to build freely upon the ideas and information
conveyed by a work.
 
Feist, 499 U.S. at 349-50 (quotations and citations omitted). We do not
think that the Court's statement that "copyright assures authors the
right to their original expression" indicates that all expression is
necessarily copyrightable; while original expression is necessary for
copyright protection, we do not think that it is alone
sufficient. Courts must still inquire whether original expression falls
within one of the categories foreclosed from copyright protection by @
102(b), such as being a "method of operation."
 
   We also note that in most contexts, there is no need to "build" upon
other people's expression, [*38] for the ideas conveyed by that
expression can be conveyed by someone else without copying the first
author's expression. n13 In the context of methods of operation,
however, "building" requires the use of the precise method of operation
already employed; otherwise, "building" would require dismantling,
too. Original developers are not the only people entitled to build on
the methods of operation they create; anyone can. Thus, Borland may
build on the method of operation that Lotus designed and may use the
Lotus menu command hierarchy in doing so.
 
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -  
 
   n13 When there are a limited number of ways to express an idea,
however, the expression "merges" with the idea and becomes
uncopyrightable. Morrissey, 379 F.2d at 678-79.
 
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - -  
 
   Our holding that methods of operation are not limited to abstractions
goes against Autoskill, 994 F.2d at 1495 n.23, in which the Tenth
Circuit rejected the defendant's argument that the keying procedure used
in a computer program was an uncopyrightable [*39] "procedure" or
"method of operation" under @ 102(b). The program at issue, which was
designed to test and train students with reading deficiencies, id. at
1481, required students to select responses to the program's queries "by
pressing the 1, 2, or 3 keys." Id. at 1495 n.23. The Tenth Circuit held
that, "for purposes of the preliminary injunction, . . . the record
showed that [this] keying procedure reflected at least a minimal degree
of creativity," as required by Feist for copyright protection. Id. As an
initial matter, we question whether a programmer's decision to have
users select a response by pressing the 1, 2, or 3 keys is
original. More importantly, however, we fail to see how "a student
selecting a response by pressing the 1, 2, or 3 keys," id., can be
anything but an unprotectable method of operation. n14
 
- - - - - - - - - - - - - - - - - -Footnotes- - - - - - - - - - - - - - - - - -  
 
   n14 The Ninth Circuit has also indicated in dicta that "menus, and
keystrokes" may be copyrightable. Brown Bag Software v. Symantec Corp.,
960 F.2d 1465, 1477 (9th Cir.), cert. denied, BB Asset Management,
Inc. v. Symantec Corp., 113 S. Ct. 198 (1992). In that case, however,
the plaintiff did not show that the defendant had copied the plaintiff's
menus or keystrokes, so the court was not directly faced with whether
the menus or keystrokes constituted an unprotectable method of
operation. Id.
 
- - - - - - - - - - - - - - - - -End Footnotes- - - - - - - - - - - - - - - - - [*40]    
 
   III.  
 
   Conclusion  
 
Because we hold that the Lotus menu command hierarchy is uncopyrightable
subject matter, we further hold that Borland did not infringe Lotus's
copyright by copying it. Accordingly, we need not consider any of
Borland's affirmative defenses. The judgment of the district court is
 
Reversed.  
 
   Concurrence follows. BOUDIN, Circuit Judge, concurring. The
importance of this case, and a slightly different emphasis in my view of
the underlying problem, prompt me to add a few words to the majority's
tightly focused discussion.
 
   I.  
 
   Most of the law of copyright and the "tools" of analysis have
developed in the context of literary works such as novels, plays, and
films. In this milieu, the principal problem--simply stated, if
difficult to resolve--is to stimulate creative expression without unduly
limiting access by others to the broader themes and concepts deployed by
the author. The middle of the spectrum presents close cases; but a
"mistake" in providing too much protection involves a small cost:
subsequent authors treating the same themes must take a few more steps
away from the original expression.
 
   The problem presented by computer programs is fundamentally [*41]
different in one respect. The computer program is a means for causing
something to happen; it has a mechanical utility, an instrumental role,
in accomplishing the world's work. Granting protection, in other words,
can have some of the consequences of patent protection in limiting other
people's ability to perform a task in the most efficient manner. Utility
does not bar copyright (dictionaries may be copyrighted), but it alters
the calculus.
 
Of course, the argument for protection is undiminished, perhaps even
enhanced, by utility: if we want more of an intellectual product, a
temporary monopoly for the creator provides incentives for others to
create other, different items in this class. But the "cost" side of the
equation may be different where one places a very high value on public
access to a useful innovation that may be the most efficient means of
performing a given task. Thus, the argument for extending protection may
be the same; but the stakes on the other side are much higher.
 
   It is no accident that patent protection has preconditions that
copyright protection does not--notably, the requirements of novelty and
non-obviousness--and that patents are granted for [*42] a shorter period
than copyrights. This problem of utility has sometimes manifested itself
in copyright cases, such as Baker v. Selden, 101 U.S. 99 (1879), and
been dealt with through various formulations that limit copyright or
create limited rights to copy. But the case law and doctrine addressed
to utility in copyright have been brief detours in the general march of
copyright law.
 
   Requests for the protection of computer menus present the concern
with fencing off access to the commons in an acute form. A new menu may
be a creative work, but over time its importance may come to reside more
in the investment that has been made by users in learning the menu and
in building their own mini-programs--macros--in reliance upon the
menu. Better typewriter keyboard layouts may exist, but the familiar
QWERTY keyboard dominates the market because that is what everyone has
learned to use. See P. David, CLIO and the Economics of QWERTY, 75
Am. Econ. Rev. 332 (1985). The QWERTY keyboard is nothing other than a
menu of letters.
 
   Thus, to assume that computer programs are just one more new means of
expression, like a filmed [*43] play, may be quite wrong. The
"form"--the written source code or the menu structure depicted on the
screen--look hauntingly like the familiar stuff of copyright; but the
"substance" probably has more to do with problems presented in patent
law or, as already noted, in those rare cases where copyright law has
confronted industrially useful expressions. Applying copyright law to
computer programs is like assembling a jigsaw puzzle whose pieces do not
quite fit.
 
   All of this would make no difference if Congress had squarely
confronted the issue, and given explicit directions as to what should be
done. The Copyright Act of 1976 took a different course. While Congress
said that computer programs might be subject to copyright protection, it
said this in very general terms; and, especially in @ 102(b), Congress
adopted a string of exclusions that if taken literally might easily seem
to exclude most computer programs from protection. The only detailed
prescriptions for computers involve narrow issues (like back-up copies)
of no relevance here.
 
   Of course, one could still read the statute as a congressional
command that the familiar doctrines of copyright law be taken and
applied to computer [*44] programs, in cookie cutter fashion, as if the
programs were novels or play scripts. Some of the cases involving
computer programs embody this approach. It seems to me mistaken on two
different grounds: the tradition of copyright law, and the likely intent
of Congress.
 
   The broad-brush conception of copyright protection, the time limits,
and the formalities have long been prescribed by statute. But the heart
of copyright doctrine--what may be protected and with what limitations
and exceptions--has been developed by the courts through experience with
individual cases. B. Kaplan, An Unhurried View of Copyright 40
(1967). Occasionally Congress addresses a problem in detail. For the
most part the interstitial development of copyright through the courts
is our tradition.
 
   Nothing in the language or legislative history of the 1976 Act, or at
least nothing brought to our attention, suggests that Congress meant the
courts to abandon this case-by-case approach. Indeed, by setting up @
102(b) as a counterpoint theme, Congress has arguably recognized the
tension and left it for the courts to resolve through the development of
case law. And case law development is adaptive: it allows new [*45]
problems to be solved with help of earlier doctrine, but it does not
preclude new doctrines to meet new situations.
 
   II.  
 
   In this case, the raw facts are mostly, if not entirely,
undisputed. Although the inferences to be drawn may be more debatable,
it is very hard to see that Borland has shown any interest in the Lotus
menu except as a fall-back option for those users already committed to
it by prior experience or in order to run their own macros using 1-2-3
commands. At least for the amateur, accessing the Lotus menu in the
Borland Quattro or Quattro Pro program takes some effort.
 
   Put differently, it is unlikely that users who value the Lotus menu
for its own sake--independent of any investment they have made
themselves in learning Lotus' commands or creating macros dependent upon
them--would choose the Borland program in order to secure access to the
Lotus menu. Borland's success is due primarily to other features. Its
rationale for deploying the Lotus menu bears the ring of truth.
 
   Now, any use of the Lotus menu by Borland is a commercial use and
deprives Lotus of a portion of its "reward," in the sense that an
infringement claim if allowed would increase Lotus' profits. But this
[*46] is circular reasoning: broadly speaking, every limitation on
copyright or privileged use diminishes the reward of the original
creator. Yet not every writing is copyrightable or every use an
infringement. The provision of reward is one concern of copyright law,
but it is not the only one. If it were, copyrights would be perpetual
and there would be no exceptions.
 
   The present case is an unattractive one for copyright protection of
the menu. The menu commands (e.g., "print," "quit") are largely for
standard procedures that Lotus did not invent and are common words that
Lotus cannot monopolize. What is left is the particular combination and
sub-grouping of commands in a pattern devised by Lotus. This arrangement
may have a more appealing logic and ease of use than some other
configurations; but there is a certain arbitrariness to many of the
choices.
 
   If Lotus is granted a monopoly on this pattern, users who have
learned the command structure of Lotus 1-2-3 or devised their own macros
are locked into Lotus, just as a typist who has learned the QWERTY
keyboard would be the captive of anyone who had a monopoly on the
production of such a keyboard. Apparently, for a period Lotus 1-2-3
[*47] has had such sway in the market that it has represented the de
facto standard for electronic spreadsheet commands. So long as Lotus is
the superior spreadsheet--either in quality or in price--there may be
nothing wrong with this advantage.
 
   But if a better spreadsheet comes along, it is hard to see why
customers who have learned the Lotus menu and devised macros for it
should remain captives of Lotus because of an investment in learning
made by the users and not by Lotus. Lotus has already reaped a
substantial reward for being first; assuming that the Borland program is
now better, good reasons exist for freeing it to attract old Lotus
customers: to enable the old customers to take advantage of a new
advance, and to reward Borland in turn for making a better product. If
Borland has not made a better product, then customers will remain with
Lotus anyway.
 
   Thus, for me the question is not whether Borland should prevail but
on what basis. Various avenues might be traveled, but the main choices
are between holding that the menu is not protectable by copyright and
devising a new doctrine that Borland's use is privileged. No solution is
perfect and no intermediate appellate court can [*48] make the final
choice.
 
   To call the menu a "method of operation" is, in the common use of
those words, a defensible position. After all, the purpose of the menu
is not to be admired as a work of literary or pictorial art. It is to
transmit directions from the user to the computer, i.e., to operate the
computer. The menu is also a "method" in the dictionary sense because it
is a "planned way of doing something," an "order or system," and (aptly
here) an "orderly or systematic arrangement, sequence or the like."
Random House Webster's College Dictionary 853 (1991).
 
A different approach would be to say that Borland's use is privileged
because, in the context already described, it is not seeking to
appropriate the advances made by Lotus' menu; rather, having provided an
arguably more attractive menu of its own, Borland is merely trying to
give former Lotus users an option to exploit their own prior investment
in learning or in macros. The difference is that such a privileged use
approach would not automatically protect Borland if it had simply copied
the Lotus menu (using different codes), contributed nothing of its own,
and resold Lotus under the Borland label.
 
   The closest [*49] analogue in conventional copyright is the fair use
doctrine. E.g., Harper & Row, Publishers, Inc. v. Nation Enters., 471
U.S. 539 (1985). Although invoked by Borland, it has largely been
brushed aside in this case because the Supreme Court has said that it is
"presumptively" unavailable where the use is a "commercial" one. See
id. at 562. In my view, this is something less than a definitive answer;
"presumptively" does not mean "always" and, in any event, the doctrine
of fair use was created by the courts and can be adapted to new
purposes.
 
   But a privileged use doctrine would certainly involve problems of its
own. It might more closely tailor the limits on copyright protection to
the reasons for limiting that protection; but it would entail a host of
administrative problems that would cause cost and delay, and would also
reduce the ability of the industry to predict outcomes. Indeed, to the
extent that Lotus' menu is an important standard in the industry, it
might be argued that any use ought to be deemed privileged.
 
   In sum, the majority's result persuades me and its formulation is as
good, if not better, than any [*50] other that occurs to me now as
within the reach of courts. Some solutions (e.g., a very short copyright
period for menus) are not options at all for courts but might be for
Congress. In all events, the choices are important ones of policy, not
linguistics, and they should be made with the underlying considerations
in view.

