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Re: The many ways confusion

From: Alexander Terekhov
Subject: Re: The many ways confusion
Date: Fri, 25 May 2007 21:35:39 +0200

rjack wrote:
> >> If there is a single way (or maybe a very, very limited way) of
> >> expressing an idea, it is said that the idea and the expression
> >> have "merged" and therefore the expression is not protectable by
> >> copyright.
> >>
> >> That has nothing to do with whether there is a patent that covers a
> >> method that can be implemented in software.  There is, in general,
> >> a variety of ways to implement ("express") the method, and
> >> therefore each implementation can have its own copyright.
> See Lexmark International, Inc. v. Static Control Components, Inc., 387
> F.3d 522 (6th Cir. 2004):

"In ascertaining this “elusive boundary line” between idea and
expression, between process and nonfunctional expression, courts have
looked to two other staples of copyright law—the doctrines of merger and
scènes à faire. Where the “expression is essential to the statement of
the idea,” CCC Info. Servs., Inc. v. Maclean Hunter Mkt. Reports, Inc.,
44 F.3d 61, 68 (2d Cir. 1994); see also Lotus Dev., 49 F.3d at 816 (“If
specific words are essential to operating something, then they are part
of a ‘method of operation’ and, as such, are unprotectable.”), or where
there is only one way or very few ways of expressing the idea, Warren
Publ’g, Inc. v. Microdos Data Corp., 115 F.3d 1509, 1519 n.27 (11th Cir.
1997), the idea and expression are said to have “merged.” In these
instances, copyright protection does not exist because granting
protection to the expressive component of the work necessarily would
extend protection to the work’s uncopyrightable ideas as well. See Gates
Rubber Co. v. Bando Chem. Indus., Ltd.,, 9 F.3d 823, 838 (10th Cir.
1993); see also Murray Hill Publ’ns, Inc. v. Twentieth Century Fox Film
Corp., 361 F.3d 312,
319 n.2 (6th Cir. 2004) (noting that where idea and expression are
intertwined and where non-protectable ideas predominate, expression is
not protected); see generally Nimmer § 13.03[B][3]. For computer
programs, “if the patentable process is embodied inextricably in the
line-by-line instructions of the computer program, [ ] then the process
merges with the expression and precludes copyright protection.” Atari I,
975 F.2d at 839–40; see, e.g., PRG-Schultz Int’l, Inc. v. Kirix Corp.,
No. 03 C 1867, 2003 WL 22232771, at *4 (N.D. Ill. Sept. 22, 2003)
(determining that copyright infringement claim failed because expression
merged with process in computer software that performed auditing tasks).

For similar reasons, when external factors constrain the choice of
expressive vehicle, the doctrine of “scènes à faire”—“scenes,” in other
words, “that must be done”—precludes copyright protection. See Twentieth
Century Fox Film, 361 F.3d at 319–20; see generally Nimmer §
13.03[B][4]. In the literary context, the doctrine means that certain
phrases that are “standard, stock, . . . or that necessarily follow from
a common theme or setting” may not obtain copyright protection. Gates
Rubber, 9 F.3d at 838. In the computer-software context, the doctrine
means that the elements of a program dictated by practical
realities—e.g., by hardware standards and mechanical specifications,
software standards and compatibility requirements, computer manufacturer
design standards, target industry practices, and standard computer
programming practices—may not obtain protection. Id. (citing case
examples); see Sega Enters., 977 F.2d at 1524 (“To the extent that a
work is functional or factual, it may be copied.”); Brown Bag Software
v. Symantec Corp., 960 F.2d 1465, 1473 (9th Cir. 1992) (affirming
district court’s finding that “[p]laintiffs may not claim copyright
protection of an . . . expression that is, if not standard, then
commonplace in the computer software industry”). As “an industry-wide
goal,” programming “[e]fficiency” represents an external constraint that
figures prominently in the copyrightability of computer programs. Altai,
982 F.2d at 708.

Generally speaking, “lock-out” codes fall on the functional-idea rather
than the original-expression side of the copyright line.  

... (“Program code that is strictly necessary to achieve current
compatibility presents a merger problem, almost by definition, and is
thus excluded from the scope of any copyright.”).

In trying to discern whether these doctrines apply, courts tend to
“focus on whether the idea is capable of various modes of expression.”
Mason v. Montgomery Data, Inc., 967 F.2d 135, 138 (5th Cir. 1992)
(quoting Franklin Computer, 714 F.2d at 1253); Atari I, 975 F.2d at 840
(“The unique arrangement of computer program expression which generates
[the] data stream does not merge with the process so long as alternate
expressions are available.”). The question, however, is not whether any
alternatives theoretically exist; it is whether other options
practically exist under the circumstances. See Altai, 982 F.2d
at 708 (“While, hypothetically, there might be a myriad of ways in which
a programmer may effectuate certain functions within a program . . .
efficiency concerns may so narrow the practical range of choice as to
make only one or two forms of expression workable options.”); Atari I,
975 F.2d at 840 (noting that “no external factor dictated the bulk of
the program” and finding the program copyrightable). In order to
characterize a choice between alleged programming alternatives as
expressive, in short, the alternatives must be feasible within
real-world constraints."

> "Nor does Nimmer support the district court’s “a number of different
> ways” reasoning. As a matter of practice, Nimmer is correct that courts
> most commonly discuss the idea-expression dichotomy in
> considering whether an original work and a partial copy of that work
> are“substantially similar” (as part of prong two of the infringement
> test), since the copyrightability of a work as a whole (prong one) is
> less frequently contested. But the idea-expression divide figures into
> the substantial similarity test not as a measure of “similarity”; it
> distinguishes the original work’s protectable elements from its
> unprotectable ones, a distinction that allows courts to determine
> whether any of the former have been copied in substantial
> enough part to constitute infringement."

"In presenting evidence in support of its motion for a preliminary
injunction, Lexmark focused on establishing that the Toner Loading
Program could have been written in other ways. Dr. Maggs, Lexmark’s
expert, described several possible alternatives in his declaration: (1)
different constants and equations could be used; (2) a lookup table
could be used in lieu of equations; (3) some measure other than torque
could be used to approximate toner level (e.g., the number of pages
printed); or (4) the same equations could be used in a different
sequence. Maggs Decl., JA 709–10. He concluded that over 50 different
programs could be written to substitute for the Toner Loading Program.
Maggs Hr’g Test., JA 940. Dr. Goldberg, SCC’s expert, acknowledged that
certain changes could be made to the program, for example, by changing
the sequence of elements in the program, Hr’g Test., JA 1021, or by
writing the Toner Loading Program in a different programming language
altogether, JA 1023. But Dr. Goldberg conceded
this point only as a theoretical matter, as he concluded that
functionality and efficiency considerations precluded any material
changes to the Toner Loading Program.


Even aside from Dr. Goldberg’s testimony that the Toner Loading Program
is the most efficient means of calculating toner levels, the
alternatives suggested by Dr. Maggs do not appear to support the
district court’s initial conclusion that the program is expressive. Dr.
Maggs’ first and third suggestions—that different equations and values
or a different means of measuring toner level altogether could have been
used—do not appear to represent alternative means of expressing the
ideas or methods of operations embodied in the Toner Loading Program;
they appear to be different ideas or methods of operation altogether.
Selection from among competing ideas or methods of operation generally
does not result in copyright-protectable expression. See Bateman, 79
F.3d at 1546 n.29 (“Generally there is more than one method of operation
or process that can be used to perform a particular computer program
function. However, methods of operation and processes are not
copyrightable.”); see also Am. Dental Ass’n v. Delta Dental Plans Ass’n,
126 F.3d 977, 980 (7th Cir. 1997) (“A lamp may be entirely original, but
if the novel elements are also functional the lamp cannot be
copyrighted.”). Nor would the use of a “lookup table” appear to differ
meaningfully from the use of other equations directly. Instead of
executing a mathematical formula on a given input, this program merely
“looks up” in a data table the output of that same formula for the given
input value. Finally, Dr. Maggs’ fourth suggestion—that the same
equations could be reordered—does not appear to show originality because
such alterations may be too trivial to support a finding of creative
expression. See M.M. Bus. Forms, 472 F.2d at 1140 (holding that
paraphrasing of words on legal forms does not contain the requisite
originality for copyright protection)."


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