Copyright
Case Note: Lotus Development Corporation v
Borland International Inc.
Jane Lambert
June 1998
This case first
appeared on the Lancaster Buildings website
The exercise of copyrights to control the after-market (in this case, the upgrade market) was an issue in Lotus Development Corporation v Borland [1997] FSR 61. This was an appeal from the District Court's finding that Quattro and Quattro Pro, the defendant's spreadsheet program, infringed copyright in the plaintiff's spreadsheet, Lotus 1-2-3. The alleged copying concerned not the underlying code of the plaintiff's software but a hierarchy of some 469 commands that the plaintiff had arranged in over 50 menus and sub-menus.
The Issue
Users were in the habit of writing "macros" or short routines that
allowed them to execute series of commands with a single keystroke
instead of retyping the whole series. Although Quattro and Quattro Pro
offered users many features and facilities that 1-2-3 lacked, the
defendant believed that many of its customers would stick with the
plaintiff when upgrading their software unless they could use the same
key strokes on the defendant's software. The defendant first included
the plaintiff's menu command hierarchy in its programs but, following
decisions in other courts that the plaintiff's command structure was
protected by copyright, it offered a facility to recognize and execute
the 1-2-3 macros upon typing a forward slash. The trial judge found that
both the menu tree and the macro recognition facility infringed the
plaintiff's copyright. On appeal the defendant argued that the
plaintiff's menu command hierarchy was a "method of operation" which
(with ideas, procedures, processes, systems, concepts, principles and
discoveries) is excluded from protection by
s.102 (b) of the United
States Copyright Act.
The Judgment
The Court of Appeals for the First Circuit accepted that submission. It
compared the plaintiff's command hierarchy to the buttons used to
control a video cassette recorder. Neither the arrangement nor labelling
of those buttons constituted a literary work. Nor did they express an
abstract method of operating the machine. In a concurring judgment,
Judge Boudin observed that if the plaintiff were granted a monopoly of
the command hierarchy users who had learned the command structure of
Lotus 1-2-3 or devised their own macros would be locked into Lotus just
as a typist who has learned the QWERTY keyboard would be the captive of
anyone who had the monopoly of producing such a keyboard. For him, the
question was not whether the defendant should prevail but on what basis.
Comment
Although an English court might have reached the same conclusion as the
First Circuit it would have had to take a different route. English law
draws no distinction between "protectable" and "non-protectable
expression". Indeed, the authors of The Modern Law of Copyrights and
Designs have gone so far as to head a section of their book "The
idea/expression fallacy" (page 61 of Volume 1 of the Second Edition). In
this country copyright subsists in a work as a whole. If copyright
subsists the court considers whether anything has been copied. If the
court finds something has been copied it goes on to decide whether what
has been taken is a substantial part of the original. If it is, the
only remaining question is whether there is a good policy reason why
liability should not be imposed. One such reason could be the
anti-competitive effect of allowing the copyright owner to exercise his
copyright as in British Leyland. As the user interface is as much part
of a computer program as any other the crucial question would be whether
the command structure was a substantial part. An English court might
well have decided that it was not, particularly if "File", "Edit" and
"View" were derived from another program. Conceivably it might have
entertained a competition argument by analogy to British Leyland
though attempts to present such an argument in this country have so far
been unsuccessful
