Analytic dissection

Last updated March 09, 2019

Analytic dissection is a concept in U.S. copyright law analysis of computer software. Analytic dissection is a tool for determining whether a work accused of copyright infringement is substantially similar to a copyright-protected work.

Copyright infringement Intellectual property violation

Copyright infringement is the use of works protected by copyright law without permission, infringing certain exclusive rights granted to the copyright holder, such as the right to reproduce, distribute, display or perform the protected work, or to make derivative works. The copyright holder is typically the work's creator, or a publisher or other business to whom copyright has been assigned. Copyright holders routinely invoke legal and technological measures to prevent and penalize copyright infringement.

In analytic dissection, unprotectable elements of a work are dissected out and discarded before making any comparison of the two works. These unprotectable components include idea (as contrasted with expression), scènes à faire (conventional elements typical of a genre), material in the public domain, and functional aspects. As the Ninth Circuit explained in the 1988 Data East case, that such elements are common to two works does not create substantial similarity. Rather, infringing similarity must be based on the similarity of what remains after the unprotectable elements are dissected out. [1]

Scène à faire is a scene in a book or film which is almost obligatory for a genre of its type. In the U.S. it also refers to a principle in copyright law in which certain elements of a creative work are held to be not protected when they are mandated by or customary to the genre.

The public domain consists of all the creative works to which no exclusive intellectual property rights apply. Those rights may have expired, been forfeited, expressly waived, or may be inapplicable.

Substantial similarity, in US copyright law, is the standard used to determine whether a defendant has infringed the reproduction right of a copyright. The standard arises out of the recognition that the exclusive right to make copies of a work would be meaningless if copyright infringement were limited to making only exact and complete reproductions of a work. Many courts also use "substantial similarity" in place of "probative" or "striking similarity" to describe the level of similarity necessary to prove that copying has occurred. A number of tests have been devised by courts to determine substantial similarity. They may rely on expert or lay observation or both and may subjectively judge the feel of a work or critically analyze its elements.

Subsequently, in Computer Associates International, Inc. v. Altai, Inc. , [2] the Second Circuit applied this conceptual tool in determining whether two computer programs were substantially similar, under the name of the "Abstraction-Filtration-Comparison" test. As the Tenth Circuit concisely explained this test in Gates Rubber v. Bando Chemical Industries:

Computer Associates International, Inc. v. Altai, Inc., 982 F.2d 693 is a decision from the United States Court of Appeals for the Second Circuit that addressed to what extent non-literal elements of software are protected by copyright law. The court used and recommended a three-step process called the Abstraction-Filtration-Comparison test. The case was an appeal from the United States District Court for the Eastern District of New York in which the district court found that defendant Altai's OSCAR 3.4 computer program had infringed plaintiff Computer Associates' copyrighted computer program entitled CA-SCHEDULER. The district court also found that Altai's OSCAR 3.5 program was not substantially similar to a portion of CA-SCHEDULER called ADAPTER, and thus denied relief as to OSCAR 3.5. Finally, the district court concluded that Computer Associate's state law trade secret misappropriation claim against Altai was preempted by the federal Copyright Act. The appeal was heard by Judges Frank X. Altimari, John Daniel Mahoney, and John M. Walker, Jr. The majority opinion was written by Judge Walker. Judge Altimari concurred in part and dissented in part. The Second Circuit affirmed the district court's ruling as to copyright infringement, but vacated and remanded its holding on trade secret preemption.

The Abstraction-Filtration-Comparison test (AFC) is a method of identifying substantial similarity for the purposes of applying copyright law. In particular, the AFC test is used to determine whether non-literal elements of a computer program have been copied by comparing the protectable elements of two programs. The AFC test was developed by the United States Court of Appeals for the Second Circuit in 1992 in its opinion for Computer Associates Int. Inc. v. Altai Inc. It has been widely adopted by United States courts and recognized by courts outside the United States as well.

[A] court should dissect the program according to its varying levels of generality as provided in the abstractions test. Second, poised with this framework, the court should examine each level of abstraction in order to filter out those elements of the program that are unprotectable. Filtration should eliminate from comparison the unprotectable elements of ideas, processes, facts, public domain information, merger material, scènes à faire material, and other unprotectable elements suggested by the particular facts of the program under examination. Third, the court should then compare the remaining protectable elements with the allegedly infringing program to determine whether the defendants have misappropriated substantial elements of the plaintiff's program. [3]

This legal test has generally "been applied in subsequent [copyright law] decisions, to the extent that it is recognised in the USA, and elsewhere, as the accepted standard." [4]

Parallels in patent law

A conceptually similar approach has been applied at times in US, UK, and European patent law. In Neilson v. Harford , the Exchequer adopted a method of analyzing the patent-eligibility of inventions based on a natural principle or phenomenon of nature, in which the principle is treated as if part of the prior art and the remainder of the invention (i.e., the mechanical implementation of the principle) is evaluated for patentability under the usual tests (novelty, etc.). The US Supreme Court followed this approach in O’Reilly v. Morse and subsequent decisions including Parker v. Flook and Mayo v. Prometheus . A similar type of analysis of obviousness or inventive level has been used under the name of the "point of novelty" test, which is suggested by the use of a Jepson claim.

Parker v. Flook, 437 U.S. 584 (1978), was a 1978 United States Supreme Court decision that ruled that an invention that departs from the prior art only in its use of a mathematical algorithm is patent eligible only if there is some other "inventive concept in its application." The algorithm itself must be considered as if it were part of the prior art, and the claim must be considered as a whole. The case was argued on April 25, 1978 and was decided June 22, 1978. This case is the second member of the Supreme Court's patent-eligibility trilogy.

Point of novelty is a term used in patent law to distinguish those elements or limitations in a patent claim that are conventional or known from those elements or limitations that are novel, i.e. not conventional or known. That part of the invention may also be termed its "point of departure from the prior art." The term is also applied to a patentability test--the point of novelty test--which determines patentability by considering the point(s) of novelty after dissecting out the conventional part.

Related Research Articles

The idea–expression divide or idea–expression dichotomy limits the scope of copyright protection by differentiating an idea from the expression or manifestation of that idea.

Apple Computer, Inc. v. Microsoft Corporation, 35 F.3d 1435, was a copyright infringement lawsuit in which Apple Computer, Inc. sought to prevent Microsoft and Hewlett-Packard from using visual graphical user interface (GUI) elements that were similar to those in Apple's Lisa and Macintosh operating systems. The court ruled that, "Apple cannot get patent-like protection for the idea of a graphical user interface, or the idea of a desktop metaphor [under copyright law]...". In the midst of the Apple v. Microsoft lawsuit, Xerox also sued Apple alleging that Mac's GUI was heavily based on Xerox's. The district court dismissed Xerox's claims without addressing whether Apple's GUI infringed Xerox's. Apple lost all claims in the Microsoft suit except for the ruling that the trash can icon and folder icons from Hewlett-Packard's NewWave windows application were infringing. The lawsuit was filed in 1988 and lasted four years; the decision was affirmed on appeal in 1994, and Apple's appeal to the U.S. Supreme Court was denied.

Software copyright is the extension of copyright law to machine-readable software. While many of the legal principles and policy debates concerning software copyright have close parallels in other domains of copyright law, there are a number of distinctive issues that arise with software. This article will primarily focus on topics particular to software.

Copyright misuse is an equitable defense against copyright infringement in the United States allowing copyright infringers to avoid infringement liability if the copyright holder has engaged in abusive or improper conduct in exploiting or enforcing the copyright. Copyright misuse is comparable to, and draws from precedents under, the older doctrine of patent misuse, which dates back to the early years of the 20th century and derives from the more general equity doctrine of "unclean hands", which bars a party from obtaining equitable relief against another when the party has acted improperly.

State Street Bank and Trust Company v. Signature Financial Group, Inc., 149 F.3d 1368, also referred to as State Street or State Street Bank, was a 1998 decision of the United States Court of Appeals for the Federal Circuit concerning the patentability of business methods. State Street for a time established the principle that a claimed invention was eligible for protection by a patent in the United States if it involved some practical application and, in the words of the State Street opinion, "it produces a useful, concrete and tangible result."

Patentable, statutory or patent-eligible subject matter is subject matter which is susceptible of patent protection. The laws or patent practices of many countries provide that certain subject-matter is excluded from patentability, even if the invention is novel and non-obvious. Together with novelty, inventive step or nonobviousness, utility, and industrial applicability, the question of whether a particular subject matter is patentable is one of the substantive requirements for patentability.

Data East USA, Inc. v. Epyx, Inc. 862 F.2d 204, 9 U.S.P.Q.2d (BNA) 1322, is a court case in which Data East, a video game manufacturer, contended that Epyx, a competing video game manufacturer, licensed and distributed a video game, World Karate Championship, that infringed on the copyright of a video game developed by Data East, Karate Champ. After a district court sided with Data East, the United States Court of Appeals for the Ninth Circuit court on appeal reversed the decision of copyright infringement. This judgment was based on the lack of "substantial similarity" between the games, because the identified similarities were inherent to all karate video games.

Comprehensive Technologies International, Inc. v. Software Artisans, Inc., 3 F.3d 730 was a case in which the U.S. Court of Appeals for the Fourth Circuit discussed legal tests for software copyright infringement, and ruled that trade secret misappropriation requires more than circumstantial evidence. The case also ruled on what terms may be reasonable and enforceable in non-compete agreements.

Adobe Systems, Inc. v. Southern Software, Inc. was a case in the United States District Court for the Northern District of California regarding the copyrightability of digitized typefaces. The case is notable since typeface designs in general are not protected under United States copyright law, as determined in Eltra Corp. v. Ringer. Since that case, the United States Copyright Office has published policy decisions acknowledging the registration of computer programs that generate typefaces. In this case, the court held that Adobe's Utopia font was protectable under copyright and Southern Software, Inc.'s Veracity font was substantially similar and infringing.

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Roth Greeting Cards v. United Card Co., 429 F.2d 1106, was a Ninth Circuit case involving the copyright of greeting cards that introduced the "total concept and feel" standard for determining substantial similarity. Courts used this test in later cases such as Reyher v. Children's Television Workshop (1976).

Sid & Marty Krofft Television Productions Inc. v. McDonald's Corp. (1977) was a case in which puppeteers and television producers Sid and Marty Krofft alleged that the copyright in their H.R. Pufnstuf children's television program had been infringed by a series of McDonald's "McDonaldland" advertisements. The finding introduced the concepts of extrinsic and intrinsic tests to determine substantial similarity.

Delrina Corporation v. Triolet Systems Inc2002 CanLII 11389, 58 OR (3d) 339, also known as Delrina II, is a 2002 Ontario Court of Appeal case which established the existence of the merger doctrine in Canadian copyright law. The plaintiff, Delrina Corp., sued Triolet Systems Inc. and Brian Duncombe for infringing its copyright of the computer program Sysview by designing similar software, called Assess. The plaintiffs were awarded an interlocutory injunction but ultimately lost at trial. Delrina Corp.’s appeal to the Ontario Court of Appeal was dismissed.

Atari Games Corp. v. Nintendo of America Inc., 975 F.2d 832, is a United States Court of Appeals for the Federal Circuit case, in which the court held that Atari Games engaged in copyright infringement by copying Nintendo's lock-out system, the 10NES. The 10NES was designed to prevent Nintendo's video game console, the Nintendo Entertainment System (NES), from accepting unauthorized game cartridges. Atari, after unsuccessful attempts to reverse engineer the lock-out system, obtained an unauthorized copy of the source code from the Copyright Office and used it to create its 10NES replica, the Rabbit. The case involved copyright infringement claims by Nintendo and a defense based on fair use and copyright misuse by Atari.

Brown Bag Software v. Symantec Corp. is an intellectual property law case in which the United States Court of Appeals for the Ninth Circuit affirmed-in-part and vacated-in-part the previous ruling of the United States District Court for the Northern District of California. Brown Bag Software sued Symantec Corporation and John L. Friend, an individual software developer for Softworks Development, for copyright infringement and several state law claims regarding the similarity of Symantec Corporation's and Brown Bag Software's computer outlining programs.

References

The citations in this Article are written in Bluebook style. Please see the Talk page for this Article.

↑ See Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204 (9th Cir. 1988) (video game case).
↑ 982 F.2d 693 (2d Cir. 1992).
↑ Gates Rubber Co. v. Bando Chemical Industries, Ltd., 9 F.3d 823 (10th Cir. 1993).
↑ Stanley Lai, The Copyright Protection of Computer Software in the United Kingdom 30 (2000) (collecting authorities).

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[1] See Data East USA, Inc. v. Epyx, Inc., 862 F.2d 204 (9th Cir. 1988) (video game case).

[2] 982 F.2d 693 (2d Cir. 1992).

[3] Gates Rubber Co. v. Bando Chemical Industries, Ltd., 9 F.3d 823 (10th Cir. 1993).

[4] Stanley Lai, The Copyright Protection of Computer Software in the United Kingdom 30 (2000) (collecting authorities).