Whelan v. Jaslow

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Whelan v. Jaslow
Seal of the United States Court of Appeals for the Third Circuit.svg
Court United States Court of Appeals for the Third Circuit
Full case nameWhelan Assocs., Inc. v. Jaslow Dental Laboratory, Inc.
Argued3 March 1986
Decided4 August 1986
Citation(s)797 F.2d 1222; 1240 (3d Cir. 1986); 479 U.S. 1031 (1987);
Case opinions
Copyright protection of computer programs may extend beyond the programs' literal code to their structure, sequence and organization
Court membership
Judge(s) sittingGIBBONS, BECKER, and ROSENN, Circuit Judges
Keywords
copyright infringement, non-literal elements, substantial similarity

Whelan Assocs., Inc. v. Jaslow Dental Laboratory, Inc. (3rd Cir. 1986) was a landmark case in defining principles that applied to copyright of computer software in the United States, extending beyond literal copying of the text to copying the more abstract structure, sequence and organization. [1] The decision initiated a six-year period (until Computer Associates Int. Inc. v. Altai Inc. ) of excessive copyright protection, suppressing innovation. [2]

Contents

Background of the case

In 1978 Rand Jaslow tried to build a computer program to handle customer management, billing, accounting, inventory management and other functions for Jaslow Dental Laboratories. He gave up after a few months and hired Strohl Systems to do the job. The software was built by the half-owner of Strohl, Elaine Whelan, and delivered in March 1979. It was written in the EDL language and ran on an IBM Series/1 minicomputer. Strohl kept ownership of the software, which was branded Dentalab, and could license it to other companies in exchange for a 10% commission to Jaslow. In November 1979 Whelan left Strohl and set up her own business, acquiring the right to the software. [1]

Later, Jaslow became engaged in selling the Dentalab software in exchange for a percentage of the gross sales. [3] He formed a company named Dentcom which in late 1982 began to develop a program in a different computer language (BASIC) but with very similar functionality called Dentlab, marketed as a Dentalab successor. The new software could run on IBM Personal Computers, giving access to a broader market. On 30 June 1983 Jaslow's company filed a suit in Pennsylvania state court alleging that Whelan had misappropriated its trade secrets. Whelan filed a countersuit in federal court in Pennsylvania alleging that the Dentlab software violated Whelan's copyrights in the Dentalab software. [4] The district court ruled that Dentlab was substantially similar to Dentalab because its structure and overall organization were substantially similar. [5] Jaslow appealed the decision to the U.S. Third Circuit Court of Appeals. [6]

Relevant law

The district court ruling in the Whelan case drew on the established doctrine that even when the component parts of a work cannot be copyrightable, the structure and organization of a work may be. [7] The court also drew support from the 1985 SAS Inst. Inc. v. S&H Computer Sys. Inc. in which it had been found that copyright protected organizational and structural details, not just specific lines of code. [8] Structure, sequence and organization (SSO) in this case was defined as "the manner in which the program operates, controls and regulates the computer in receiving, assembling, calculating, retaining, correlating, and producing useful information." [9] SSO refers to non-literal elements of computer programs that include "data input formats, file structures, design, organization and flow of the code, screen outputs or user interfaces, and the flow and sequencing of the screens." [10]

Decision

The Court of Appeals for the Third Circuit noted that computer programs are literary works under U.S. law. [11] The court drew an analogy with a concept defined by Judge Learned Hand who noted, talking about a play, that the exact wording was certainly protected, and then there were a series of layers of increasing abstraction before the high-level plot outline is reached, which is not protected. An ad hoc judgement based on careful comparison of the works would be needed to determine where in this spectrum any alleged copying lay, and to decide whether it was at a sufficiently specific level to be a violation rather than a different expression of the same idea. But "careful comparison" in the case of software works might involve checking millions of lines of code. [12]

The court rejected the "extrinsic-intrinsic" test that had commonly been used until then, where an expert and a lay observer are asked to independently determine whether the works are substantially similar. [6] The court reasoned that with literary works a non-literal element is protected to the extent that it is an expression of an idea rather than the idea itself. By analogy, the purpose or function of a software work would be the work's "idea", while everything not necessary to that purpose or function would be part of the expression of the idea. The expression would be protected, but the basic purpose or function would not. [3] On this basis the Court of Appeals upheld the district court's ruling of copyright violation due to similarity of SSO. [13] The court found that the Copyright Act of 1976 supported its view of a software work as a compilation [fn 1] , saying: [14]

Although the Code does not use the terms "sequence," "order," or "structure," it is clear from the definition of compilations and derivative works, and the protection afforded them, that Congress was aware of the fact that the sequencing and ordering of materials could be copyrighted, i.e. that the sequence and order could be parts of the expression, not the idea, of a work.

Results

The Whelan decision initiated a period of excessively tight protection, suppressing innovation, since almost everything other than the broad purpose of a software work would be protected. The only exception was where the functionality could only be achieved in a very small number of ways. In these cases there could be no protection due to the merger doctrine, which applies when the expression and the idea are inextricably merged. [2] Later the same year, in Broderbund v. Unison the court cited Whelan when finding that the overall structure, sequencing, and arrangement of screens, or the "total concept and feel", could be protected by copyright. [15] [16]

Related Research Articles

Copyright is a type of intellectual property that gives its owner the exclusive right to make copies of a creative work, usually for a limited time. The creative work may be in a literary, artistic, educational, or musical form. Copyright is intended to protect the original expression of an idea in the form of a creative work, but not the idea itself. A copyright is subject to limitations based on public interest considerations, such as the fair use doctrine in the United States.

The idea–expression distinction or idea–expression dichotomy is a legal doctrine in the United States that limits the scope of copyright protection by differentiating an idea from the expression or manifestation of that idea.

<i>Apple Computer, Inc. v. Microsoft Corp.</i>

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 application 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 primarily focuses on topics particular to software.

Scène à faire is a scene in a book or film which is almost obligatory for a book or film in that genre. 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.

<i>Computer Associates International, Inc. v. Altai, Inc.</i>

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 7.0 called SYSTEM ADAPTER, and thus denied relief as to OSCAR 3.5. Finally, the district court concluded that Computer Associates' state law trade secret misappropriation claim against Altai was preempted by the federal Copyright Act. The appeal was heard by Judges Frank 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.

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.

<i>Sega v. Accolade</i> 1992 American court case

Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510, is a case in which the United States Court of Appeals for the Ninth Circuit applied American intellectual property law to the reverse engineering of computer software. Stemming from the publishing of several Sega Genesis games by video game publisher Accolade, which had disassembled Genesis software in order to publish games without being licensed by Sega, the case involved several overlapping issues, including the scope of copyright, permissible uses for trademarks, and the scope of the fair use doctrine for computer code.

<i>Data East USA, Inc. v. Epyx, Inc.</i>

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.

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.

<i>Adobe Systems, Inc. v. Southern Software, Inc.</i> United States District Court case

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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Structure, sequence and organization (SSO) is a term used in the United States to define a basis for comparing one software work to another in order to determine if copying has occurred that infringes on copyright, even when the second work is not a literal copy of the first. The term was introduced in the case of Whelan v. Jaslow in 1986. The method of comparing the SSO of two software products has since evolved in attempts to avoid the extremes of over-protection and under-protection, both of which are considered to discourage innovation. More recently, the concept has been used in Oracle America, Inc. v. Google, Inc.

Google LLC v. Oracle America, Inc. was a legal case within the United States related to the nature of computer code and copyright law. The dispute centered on the use of parts of the Java programming language's application programming interfaces (APIs) and about 11,000 lines of source code, which are owned by Oracle, within early versions of the Android operating system by Google. Google has since transitioned Android to a copyright-unburdened engine without the source code, and has admitted to using the APIs but claimed this was within fair use.

<i>Broderbund Software Inc. v. Unison World, Inc.</i>

Broderbund Software Inc. v. Unison World, Inc., 648 F. Supp. 1127, 1133, was a United States District Court for the Northern District of California software case, initially important in determining how U.S. copyright law applied to the look and feel presented by a software product. It took an expansive position which later courts increasingly rejected.

Paraphrasing of copyrighted material may reduce the probability that a court will find that copyright has been infringed; however, there have been many cases where a paraphrase that uses quite different words and sentence structure has been found to infringe on a prior work's copyright.

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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).

Delrina Corporation v. Triolet Systems Inc, 2002 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.

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<i>Tetris Holding, LLC v. Xio Interactive, Inc.</i> 2012 legal decision

Tetris Holding, LLC v. Xio Interactive, Inc., 863 F.Supp.2d 394, is a legal case related to copyright of video games confirming that a video game's look and feel can be protected under copyright law. Tetris Holding is a company that holds the Copyright to the original Tetris game from 1984, and licenses those rights to other game developers. Xio Interactive is a game developer that released Mino in 2009, a mobile game based on the gameplay of Tetris. Mino was downloaded millions of times, and Tetris Holding filed a DMCA notice and eventually a lawsuit against Xio for copyright infringement.

References

Notes
  1. ↑ In U.S. copyright law a "compilation" is defined as a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. [14]
Citations
  1. 1 2 Graham 1999, p. 88.
  2. 1 2 Abramson 2001, p. 57.
  3. 1 2 Kappel 1991, p. 704.
  4. ↑ Graham 1999, p. 89.
  5. ↑ Hamilton & Sabety 1997, p. 250.
  6. 1 2 Graham 1999, p. 90.
  7. ↑ Hamilton & Sabety 1997, p. 241.
  8. ↑ Epstein 2006, p. 11-27.
  9. ↑ Kappel 1991, p. 699.
  10. ↑ Scott 2006, p. 5-56.
  11. ↑ Hansen 2006, p. 170.
  12. ↑ Mnookin 2010, p. 158.
  13. ↑ Graham 1999, p. 91.
  14. ↑ Scott 2006, p. 5-55.
  15. ↑ Kappel 1991, p. 705.
  16. ↑ Nimmer 2008, p. 510.
Sources
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