George Washington Law Review

April, 1992

Note

SUI GENERIS INTELLECTUAL PROPERTY PROTECTION FOR COMPUTER SOFTWARE

John C. Phillips

Copyright © 1992 by the George Washington Law Review; John C. Phillips

The Constitution of the United States gives Congress power to "promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." [FN1] This Clause is the constitutional basis for several of the federal intellectual property laws, including the patent, [FN2] copyright, [FN3] and semiconductor chip protection [FN4] statutes. The scope of protection for any intellectual property scheme is defined through legislative balancing of two equally important, yet competing policy goals: "safeguarding free competition and encouraging technological progress." [FN5]

To encourage innovation, inventors and authors must have an assurance that they will benefit from their work. If society were free to utilize the fruits of innovators' labors without compensating them, innovators would lose the motivation to continue their creative efforts. To provide an incentive for individuals to share their genius *998 with society, the federal government is willing to grant a limited monopoly to individuals who contribute to the public store of scientific knowledge and artistic expression. This monopoly, however, must not be so broad as to stifle competition or impede technological and intellectual progress by withholding from the public the basic building blocks of creativity or scientific advancement. Nor may the monopoly be granted without consideration in return. The authors and inventors must disseminate to the public the knowledge gained from their work, and thereby promote the advancement of science, technology, and culture in society. [FN6] This scheme contemplates a quid-pro-quo arrangement: By supplying a limited monopoly in exchange for full public disclosure, the advancement of technology is assured.

Exchanging a limited monopoly on an innovative development in return for public disclosure of the idea behind the innovation is known as the "intellectual property bargain." [FN7] Any plan of intellectual property protection for computer software must properly fashion this "bargain" to provide adequate incentive to innovators without impeding the advancement of technology or creativity by unduly suppressing the free exchange of information.

Currently, the predominant avenue followed to protect intellectual property rights in computer software is the copyright statutes. [FN8] The basic tenet of copyright law is to protect the expression of an idea, but not the underlying idea itself. [FN9] For example, authors could acquire a copyright on a new rendition of the story of Romeo and Juliet, as long as they wrote it independently and did not copy the dialogue, or other expressive elements, from Shakespeare. This *999 "idea/expression" dichotomy [FN10] attempts to strike a balance between the free use of information on the one hand, and the protection of innovative or creative works on the other. [FN11]

Although the application of copyright law arguably provides adequate protection for many forms of expression, such as books, movies, sound recordings, and maps, [FN12] this Note argues that copyright law is becoming increasingly ill-suited for the protection of intellectual property rights in computer software. Recent federal court decisions and pending suits have shown that the application of copyright law to the area of computer software is unpredictable in its scope of protection. [FN13] The present copyright statutes fail to furnish the proper degree of protection needed to encourage the development of innovative software products. This deficiency of *1000 incentive, in turn, threatens the United States' position as the world leader in computer software technology.

The current copyright law provides insufficient guidance for consistent or cogent judicial application. The recent well-meaning attempts by a legislatively unguided judiciary to remedy the inadequacy of protection have further aggravated the problem. In addition to being overly subjective and unpredictable, these case law developments in software copyright protection arguably (1) exceed statutory authority and legislative intent, (2) have the potential to lessen competition in the software industry by decreasing the predictability of the scope of protection, and consequently increasing the risk involved in the development of new software products, and (3) may adversely affect the copyright protection provided to other non-computer related materials, such as books, movies, music, and maps. Thus, a legislative solution is required to define a sui generis bundle of rights for the protection of computer software.

Part I of this Note discusses the basics of computer software and its increasingly important role in modern society. It details the software industry's practice of borrowing and building on the ideas of others, and describes the current dissatisfaction with the protection provided by copyright law. Part II discusses the scope of coverage provided by the copyright statutes. A case study of Lotus Development Corp. v. Paperback Software International [FN14] is used to show how this coverage has been applied in its most expansive form to date. Part III discusses why alternative methods of protection, such as those provided in patent, trademark, trade secret law, or a judicially expanded version of copyright law, are less than optimal solutions. Part IV sets forth a proposed legislative program for the protection of computer software. This proposed legislative scheme is applied to potential conflicts, and is analyzed in light of practical considerations and the competing policy goals of free dissemination of ideas and encouraging innovation.

I. An Overview of Computer Software Technology

A. National Importance of the Computer Software Industry

The vitality of the computer software industry affects not only the electronics and computer industries, but the national economy as a whole. [FN15] Software is vital to government defense and civilian agency *1001 operations, academia, and private sector industries such as telecommunications, electronics, transportation, manufacturing, and finance. [FN16] The United States software industry accounts for domestic revenues of over fifty billion dollars each year in worldwide sales and services. [FN17] In contrast to areas such as consumer electronics and computer hardware, the United States is the world leader in the innovation of computer software, and holds seventy percent of the world software market. [FN18] This market dominance, however, may be in jeopardy as Japanese and European competitors are showing rapid progress. [FN19] Accordingly, it is important to provide United States software developers with intellectual property coverage adequate to protect existing technology and encourage further innovation in the field. Lack of adequate protection would handicap American developers unnecessarily in the competition for the world software market.

The importance of computer software in the world economy will continue to increase. Because software is more versatile and less expensive than functionally equivalent hardware, all aspects of electronics, computers, and information systems are increasingly dependent on software as an integral part of these technologies. At present, software development may account for fifty to ninety percent of the total development costs of a typical industrial or scientific system, [FN20] and this percentage is likely to increase.

Technologies such as computer software particularly need legal protection because of the great disparity between the large cost incurred in developing a software product and the negligible cost of copying that product. A developer will spend immense amounts of time and money for the original design, programming, testing, debugging, and documentation phases of creating a commercially viable computer program. Absent legal protection, a copyist may appropriate the benefit of a developer's creativity and hard work without the cost or time investment inherent in such activity. [FN21]

The product of multiple man-years of effort spent creating an original program can be copied onto a ninety-nine cent disk in a *1002 matter of seconds using a simple copy program. This factor, referred to as the "difficulty of exclusion," [FN22] demonstrates the sensitive nature of software and its need for special protective measures.

In sum, software technology plays a crucial role in the security of the United States and the vitality of the economy; [FN23] simultaneously, the nature of software makes it especially sensitive and susceptible to illegal copying. Therefore, the concurrence of these two factors places software in a position deserving of specialized attention, and presents a unique challenge to policymakers.

B. Computer Software Basics

For the reader to understand the issues discussed in this Note, it is necessary to explain a few basic concepts relating to computer software and its development.

In the broadest sense, a computer consists of two elements: hardware and software. Hardware includes the physical embodiment and structures associated with a computer system. A typical hardware system consists of: a power supply chassis housing a central processor that acts as the main control unit; multiple electronic circuits that perform the millions of mathematical calculations required to make the computer operate; several types of memory that store various programs and the data on which they operate; input devices such as the keyboard, mouse, touch-screen, and telephone modem; and output devices such as a monitor or a printer. The hardware receives instructions from the software to perform various functions in a particular sequence.

The software makes the computer perform the functions desired by the programmer. Software is a generic word to describe a collection of one or more computer programs. [FN24] The copyright statute defines a computer program as a "set of statements or instructions *1003 to be used directly or indirectly in a computer in order to bring about a certain result." [FN25] Computer programs are typically written in some form of computer programming language, such as C, Pascal, Basic, Cobol, or Fortran. These programs resemble a list of statements consisting of pseudo-English words along with various mathematical symbols. [FN26] Within the physical limitations of the computer hardware, the usefulness, complexity, sophistication, simplicity, or creativity of the software is limited only by the imagination of the programmer.

When developing a new program, a programmer generally will rely on existing programs as a source of know-how and inspiration. Typically, a useful software product is the result of combining a number of discrete modules, each of which performs an individual function. A module may consist of tens, hundreds, or thousands of lines of programming language statements. Many of these modules may have been created originally for other programs, or may have come from textbooks that describe an efficient method of performing a particular function. For example, most of the database programs on the market have a capability for both alphabetizing names and sorting numbers in either ascending or descending order. Each of these software packages likely employs a module named "SORT" to accomplish these functions. Many different types of sorting modules have been developed over the years. [FN27] Rarely would industry programmers create an entirely new SORT module from scratch. More likely, they would pick one for its efficiency and speed either from a previous program, a software library, or the technical literature available on the topic. [FN28]

In this way, each new piece of software will consist of several components- some newly written for the project and some preexisting components that were copied from other sources. The resulting *1004 product, as a whole, may be a significant advance in computer software, even though it contains many modules that are considered common in the field. Developers of such an innovative product understandably desire protection for their finished product, so that they can exclude others from the market for a period sufficient to recapture their development costs plus a reasonable profit. Furthermore, the individual, newly invented modules may have substantial import apart from their use in the program as a whole. Developers may desire protection for these particular modules as well as protection for the product as a whole.

C. "Borrowing of Ideas" in Computer Software Development

Progress in the field of computer software is accomplished through borrowing and building upon the ideas of others. This practice represents a desire to avoid "reinventing the wheel" with each new program, and is thought to be a crucial element for continued software innovation. [FN29]

This philosophy is reflected in the "hacker ethic" of the 1970s, in which software developers freely shared their ideas and computer programs with others in a mutually beneficial arrangement intended to advance the state of software technology through the free exchange of information. [FN30] Although the potential for large profits has restricted the free flow of information severely, this philosophy is still held by a number of stalwarts, most notably, Richard Stallman of The League for Programming Freedom. Stallman asserts that unrestricted access to borrow and improve upon the work of others is crucial to the continued advancement of software and the United States' standing as the international leader in software technology. [FN31]

The "borrowing of ideas" concept for progress in the area of computer software technology has been described variously as "stepping-stone progress [that] requires plagiarizing in some manner the underlying copyrighted work," [FN32] and as "'dwarfs standing ... upon the shoulders of giants, and so able to see more and farther than the ancients."' [FN33] These phrases connote the evolutionary nature of software development. Rarely will a software developer create a breakthrough pioneer product by means of isolated research and effort or a solitary flash of genius. Rather, progress is accomplished by small, specific changes to prior works by various *1005 groups who each build upon and learn from the work of others in the field. One industry commentator likened this development process to the "creation of folk art." [FN34]

Although virtually all advances in every field of science or art build upon the previous work of others, this practice, for a number of reasons, seems to be employed especially in the field of software development. First, developers strive to minimize the risks of losing their initial development costs. A high market demand for new and better software products creates an incentive for innovation in the field. This incentive is tempered, however, by an understandable desire to avoid the risk of creating an unwanted product. The result is that developers will utilize those elements of existing products that previously have achieved commercial success and will improve upon or add to those elements in creating their own products. [FN35]

Second, the necessity of training acts as a barrier to entry of new software products. Because of their relatively complex nature, computer software programs historically have required the consumer to memorize a large assortment of arcane symbols and command sequences. A consumer of a particular product normally will encounter a significant learning curve in becoming proficient in its use. Invariably, this acts as a market barrier to the entry of new products that, to gain market acceptance, would force a consumer to abandon his knowledge of an old program and learn the intricacies of a new program starting from ground zero. [FN36] Therefore, developers who create a product that can eliminate or reduce this learning curve by copying familiar elements of existing programs have a significant market advantage.

Finally, computer software developers face a relatively limited range of expression. Although computer hardware is being continually enhanced to operate faster and with greater capacity for handling, data, the basic configuration of the human interface to the computer has changed only slightly. A typical computer interface consists of a two-dimensional display screen that communicates information to the user, who in turn talks back to the computer through a standard "QWERTY" keyboard and possibly another input device, such as a mouse. [FN37] Under these restrictions, it seems inevitable that certain "functionally optimal" methods of conveying *1006 or receiving information between the computer and the user will arise. [FN38] To attempt to re-create individually a substitute for a functionally optimal expression is inefficient; consequently, copying becomes a natural tendency. [FN39]

The clash of copyright law and the evolutionary nature of software development creates a dilemma. On one hand, a software developer who possesses a properly registered copyright on a program can monopolize its expression for a disproportionately long duration as compared to its commercial lifetime. [FN40] This contradicts the basic purpose of intellectual property law, "to promote the Progress of Science," [FN41] because it keeps this particular expression out of the public store of available building blocks. In addition, allowing a long-term monopoly undermines any effort for market standardization. The lack of standardization forces the consumer to choose between climbing a multitude of learning curves associated with each different software product, or forgoing the functional advantages of many new programs.

On the other hand, because of the difficulty of exclusion in the field, too little protection for software would provide a strong disincentive to innovate. Developers must be assured of recouping their development costs and realizing a profit if they are to generate an *1007 innovative product. A monopoly may act as an added incentive to innovate-it prohibits other developers from blindly copying a successful program and forces them to create new software products sufficiently desirable to convince a consumer to abandon the older product. This high threshold may prevent the software industry from settling on a suboptimal standard merely because it is popular and convenient. [FN42] Clearly, a balance must be found between these two competing concerns.

D. Copyright Protection Is No Longer Appropriate for Computer Software

Arguably, copyright was a useful and adequate form of protection for computer software at the inception of the computer age. Advances in software technology, however, have made copyright an increasingly inapt choice for computer software intellectual-property protection.

One of the most important and recent innovations in software technology is the Graphical User Interface (GUI). [FN43] Unlike earlier software, which communicated with the user by means of printing pregenerated English messages on the screen one line at a time, a GUI communicates information effectively by filling the screen with words, colors, sounds, pictures, symbols, or icons to communicate several items and various types of information simultaneously to the user. The goal of such an interface is to optimize the flow of information between the computer and the user to increase efficiency and productivity. A significant amount of creative thought, experimentation, and psychological testing has been undertaken at considerable cost to optimize the effectiveness of the GUI.

Understandably, GUI developers desire intellectual property protection to guard their investments in this effort. In earlier software products, developers easily could conceal the secrets of a program by withholding the source code as a trade secret. [FN44] In contrast, much of the genius of a modern GUI lays in its particular combination of visual and other sensory components. Although competitors would not have the actual source code from which they could copy *1008 particular modules, they could easily recreate the sensory elements of the GUI so that their "copy" would perform in a similar, or even identical, manner. [FN45]

The creative effort involved in the conception of how a GUI should look and perform represents the vast bulk of development expense and commercial value; the cost of simply reducing that idea to a form understandable by the computer is significantly less. [FN46] Therefore, copyists would have development costs that are negligible compared to those of the original developer, and easily could undersell the originator in the market if this type of copying were allowed. Virtually every court now has recognized that copyright law as applied in earlier software infringement cases is insufficient to deal with these new problems that involve more than the strict copying of literal source code. [FN47] The extent to which copyright law should be modified to accommodate advances in computer software technology, however, remains in dispute. [FN48]

It is easy to understand why, in the early days of the computer software industry, copyright seemed a natural form of protection. The sensory-interface aspect of a computer was relatively unimportant. The creative aspect of an endeavor was embodied in its source code, which had considerable similarity to the text of a book. Not surprisingly, a computer programmer was known as the program's "author." The analogy of a computer program to a book was appropriate, and the application of the same type of intellectual property protection to each was convenient and adequate. Recent advances in software technology have made the analogy of computer software as a form of literature to be protected under the *1009 copyright law significantly less meaningful, and future advances only will aggravate the problem. [FN49]

Under the current copyright law, computer software is provided the same protection as are works of a creative nature such as books, plays, and musical recordings. Consumers, however, buy these items with different motivations in mind than when they buy software. In general, consumers purchase software for its utilitarian value in accomplishing certain functions. The aesthetic appeal or originality of a software product is typically of lesser importance than its functionality and ease of use. [FN50] If developers can provide a desirable and functional product only at significant developmental expense, they must rely on continuing sales over the technical lifetime of the product to realize a profit. Competitors, if allowed to do so, could copy the underlying idea and express it in their own fashion much cheaper than the originator because of the significant reduction of development costs. Consumers would have no reason to buy the original product because the "copy" would be cheaper and would provide the same, or perhaps improved, functionality.

In contrast, many other types of copyrightable works are purchased for originality or aesthetic appeal. [FN51] Development of original artistic ideas is also expensive, but consumers are much more likely to be attracted by the originality or artistic appeal of these types of works than in the case of computer software. For example, although "BattleStar: Gallactica" may be a substantial knock-off of the "Star Wars" story, it is unlikely that a consumer will consider it an equivalent substitute. [FN52] The "Star Wars" story was valuable primarily for its originality. The presence of new plot lines and characters is desirable, if not necessary, in works of a creative nature. In contrast, software that incorporates an excessive number of new commands and concepts may provide a disincentive to purchase because of the steep learning curve in effectively utilizing the new features.

*1010 Therefore, creative works have a natural disincentive for copying-if consumers feel that a particular expression is excessively derivative of past works, they are not likely to be attracted to it. In contrast, a new software product that possesses similar features of an older product known to consumers-thus reducing the learning curve barrier-but with a lower price or improvements, is likely to be highly desirable to those consumers. [FN53] Thus, the utilitarian nature of software requires a different type of protection than that afforded by the copyright law to creative-type expressions.

In summary, software technology is becoming increasingly important to the United States' security and economic standing. The nature of software makes it particularly susceptible to copying and in special need of protection. The evolutionary trend in software development, however, along with recent advances in software technology, make the application of copyright law for protection in the software industry increasingly inappropriate. The combination of these factors demonstrates the software industry's need for special attention from the legislature and courts.

II. Copyright Protection for Computer Software

A. Scope of Copyright Protection

A copyright affords its holder the exclusive right to reproduce, adapt, publish, perform, and display the copyrighted work. [FN54] The scope of protection, however, only prevents another from copying the particular expression used by the copyright holder in conveying the underlying idea; the underlying idea itself remains unprotected and free for public use. [FN55] This fundamental distinction, that an expression of an idea is copyrightable but the underlying idea is not, was first enunciated by the Supreme Court in Baker v. Selden. [FN56] The idea-expression dichotomy was not codified, however, until the Copyright Act of 1976. [FN57] The proper subject matter of copyright is "original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device." [FN58] Today, it is undisputed that the literal source code statements of a computer program, as a "literary work," are proper subject matter for protection under the copyright statutes. [FN59] Congress specifically has stated that:

*1011 The term "literary works" does not connote any criterion of literary merit or qualitative value: it includes catalogs, directories, and similar factual, reference, or instructional works and compilations of data. It also 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. [FN60]

It is long settled that, with a few exceptions, [FN61] it is unlawful to make a verbatim copy, or to copy groups of statements from the source code, of a copyrighted program. What remains in dispute is the extent to which the nonliteral aspects of a computer program are proper subject matter for copyright protection.

In 1974 Congress created a special commission, [FN62] the National Commission on New Technological Uses of Copyrighted Works (CONTU), to study whether the "rapidly developing field of computer technology was outpacing the extant copyright laws." [FN63] CONTU was supposed to address several computer- related issues, including the protection to be afforded to nonliteral elements of a computer program. In its report to Congress, CONTU stated: "[T]he separation of idea from form of expression ... is better realized through the courts exercising their judgment in particular cases [than by a per se rule].... Flow charts, source codes, and object codes are works of authorship in which copyright subsists ...." [FN64]

The implications of the CONTU recommendations are (1) copyright protection does, in fact, extend beyond the literal source code of a computer program, and (2) the exact scope of protection should be determined through evolving case law application. [FN65] Unfortunately, CONTU offered no guidance to courts to implement its *1012 proposition. [FN66] As a result, there have been widely varying viewpoints and judicial determinations as to which nonliteral aspects should be protected.

The CONTU Report is the closest thing to a legislative history of the 1980 Amendments to the Copyright Act. Congress adopted the Report's recommendations without alteration and without any additional reports. [FN67] As a result of the CONTU Report, Congress enacted the 1980 Computer Software Copyright Act. [FN68] Its informal status as a special congressional commission report, however, keeps the CONTU Report from having the force of an actual legislative history. [FN69] Most courts recognize the informal status of the CONTU Report, but several courts nevertheless have used the Report as a binding legislative history in construing the Copyright Act. [FN70] The differing views on the binding effect of the CONTU Report partially explain why courts have applied the Copyright Act inconsistently with respect to computer software protection. The predominant source of confusion, however, is the decided lack of guidance in this complex area. Although the CONTU Report indicates that nonliteral aspects of a computer program may be proper subject matter for copyright protection, a difficulty arises in articulating an intelligible and predictable standard that allows a meaningful distinction between the idea and the expression of nonliteral elements. The lack of a standard in the statute unfairly foists this formidable burden upon a well-meaning, but unguided, judiciary. Too often, the result is confusing and unpredictable. [FN71]

B. Case Law Application of Copyright Law to Software Disputes

A recent example of a federal court providing broad protection for the nonliteral elements of a computer program is the decision in *1013 Lotus Development Corp. v. Paperback Software International. [FN72] This decision has added importance because of the dominant market position of the plaintiff, [FN73] the esteemed reputation of the judge, [FN74] and the unavailability of appeal. [FN75]

In Lotus, the court held that the menu command structure, or "user interface," of Lotus' spreadsheet product, 1-2-3, was infringed by VP-Planner, [FN76] a "clone" product made by Paperback Software, even though there may not have been any actual copying of the literal aspects of the copyrighted program. [FN77]

The central issue, as framed by Judge Keeton, was whether the nonliteral elements of a computer program, "including ... the overall organization of a program, the structure of a program's command system, and the presentation of information on the screen ... are copyrightable, and if so, how the nonliteral elements that are copyrightable may be identified." [FN78] To reach its conclusion, the court began with the commonly accepted premise that, at the very minimum, "literal manifestations of a computer program ... if original, are copyrightable." [FN79] After defining computer programs as "literary works," Judge Keeton surveyed a broad range of other literary works, such as plays and movies. [FN80] He noted that copyright protection extends to the nonliteral manifestations of these works if the protected work's expression of setting, characters, or plot is copied in such a way that the resulting product is substantially similar, even if literal features, such as the exact wording, are not copied. [FN81] Judge Keeton relied on the logic of Judge Learned Hand in holding that copyright protection similarly extended to the nonliteral aspects of a computer program because "'the right cannot be limited literally to the text, else a plagiarist would escape by immaterial *1014 variations."' [FN82]

1. Test for Determining Protectable Nonliteral Elements

After determining the threshold matter of whether nonliteral aspects of a computer program were, in fact, copyrightable, the Lotus court proceeded to identify the particular nonliteral elements that qualified for copyright protection. In determining the scope of copyright protection for the program in dispute, Judge Keeton applied a three-part test for copyrightability, which was originally developed by Judge Learned Hand in Nichols v. Universal Pictures Corp. [FN83] as a "Scale of Abstractions" test. [FN84]

According to this test, the decisionmaker must first find and articulate some idea being dealt with by the program, in a form along the scale of abstraction, "somewhere between the most abstract and the most specific of all possible conceptions." [FN85] Second, the decisionmaker must determine whether the elements in the copyright claimant's alleged expression of the idea are only those that would have to be present in every expression of that idea. [FN86] If the answer to this second part of the test is "yes," then the idea and expression have merged and the elements in question cannot be afforded copyright protection. [FN87] If the answer is "no," then one must continue to the third part of the test. The third part of the Scale of Abstractions test requires that if the alleged expression contains elements not essential to every expression of that idea, the decisionmaker must determine whether those nonessential elements are a "substantial part" of the allegedly copyrightable work. [FN88]

The nature of this three-part test makes the outcome of a software copyright infringement case overly subjective, unpredictable, and arguably detrimental to the interests of society. The first element makes infringement necessarily dependent on a judge's subjective determination as to where to draw the line on the scale of abstractions in defining the underlying idea. This ensures inconsistent and unpredictable decisions, [FN89] and may act as a barrier to new entrants *1015 in the field. The high cost to software developers who will require "lawyers [as] partners in development," [FN90] along with the unpredictable outcome of an infringement case, will likely keep start-up companies that are unwilling or financially incapable of matching litigation funds with an industry giant such as Lotus out of the software market. As a result, competition may diminish and technology may stagnate. Potential software developers will be discouraged from entering the field because they will be unable to determine the boundaries of existing products- they have no way of telling whether their product will be infringing. Furthermore, the in terrorem effects of "well-funded plaintiffs" who outspend a smaller competitor in court, in a case of "rough frontier justice," will act as a deterrent to potential competitors. [FN91]

The second element of the three-part Scale of Abstractions test tends to result in arbitrary, and possibly erroneous, applications. When determining whether a particular aspect of an expression is essential to every expression of the underlying idea, a court often looks to the current software market to determine whether other products exist that demonstrate that the same idea can be expressed differently. [FN92] Ideally, a court should be answering the theoretical question: "Are other expressions possible?" The question is often answered, however, by assessing the limited empirical data of the *1016 market. Thus, although ostensibly determining whether other expressions of the same idea are possible, a court actually, and inappropriately, inquires whether other expressions currently exist. Arguably, the present nonexistence of an item is irrelevant to the issue of the theoretical possibility of its existence. Although it may be feasible to determine if other expressions are theoretically possible for markets in which multiple nonidentical products exist, such as the spreadsheet market, it would not be feasible if the only two entrants in the field were identical and the subject of the lawsuit at hand.

To address this inquiry correctly and completely, the decisionmaker would have to construct a different expression of the same idea to determine those elements essential to the underlying idea and those not essential. In effect, the decisionmaker would be required to put on his computer programmer's cap and concoct a new software product that demonstrated that a different expression of the same idea was possible. If a different expression did not currently exist, however, and the decisionmaker were unable to conceive of one, what would this mean? Would this mean that an alternate expression was theoretically impossible, indicating that the subject expression was not protected by copyright because the expression had merged with the underlying idea? Or would this mean only that the minds undertaking the problem were not sufficiently clever, creative, or unbiased to create a differing expression? [FN93]

The third element of the Scale of Abstractions test is a potentially over-inclusive, "all-or-nothing" approach. For instance, in the Lotus case, suppose Paperback impermissibly had copied the copyrightable user interface from Lotus, and this interface was a "substantial part" of the copyrighted work. Also suppose that Paperback had spent an enormous amount of time and money expanding upon, and adding to, the program behind the interface, so that the overall product was significantly technologically superior to Lotus' original product. Although the original interface now would be a negligible part of Paperback's product, it would remain a significant part of Lotus' inferior product, and as such could be used to enjoin Paperback from selling its new product. This outcome impedes the progress of technology. A result more beneficial to society would be to require Paperback to pay reasonable royalties to Lotus for the use of their interface. Such reasonable royalties would be based on the proportionate amount of technological contribution that the original Lotus interface plays in the overall Paperback product. Thus, technology would be advanced while still providing incentive to the innovators- Lotus would be compensated for the use of its original *1017 innovative product, and Paperback would be compensated for their improvement of, and expansion to, the concept.

The test used in Lotus for determining which nonliteral elements of a computer program should be copyrightable, therefore, is much too subjective and prone to error to provide the consistent and predictable protection needed by the software industry.

2. User Interface as a Noncopyrightable "Useful Article"

Another significant issue discussed by the Lotus court was the statutory applicability of copyright protection to computer programs as "useful articles." As defined by the copyright statutes, 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. An article that is normally a part of a useful article is considered a 'useful article."' [FN94]

Such articles "are not works of authorship in which copyright can subsist." [FN95] The defendants in Lotus argued that:

the user interface of Lotus 1-2-3 is a useful, "function[al]" object like the functional layout of gears in an "H" pattern on a standard transmission, the functional assignment of letters to keys on a standard QWERTY keyboard, and the functional configuration of controls on a musical instrument (e.g., keys of a piano). [FN96]

Therefore, the Lotus defendants asserted, the user interface of 1-2-3 was a noncopyrightable "useful article," free to be used by the public.

Judge Keeton, however, concluded that "[e]lements of expression, even if embodied in useful articles, are copyrightable if capable of identification and recognition independently of the functional ideas that make the article useful." [FN97] The Lotus court acknowledged that an argument similar to defendants' had been accepted by another court, [FN98] but felt that the other court's argument was no longer valid because "congressional and judicial development of the law of copyrightability of computer programs has advanced considerably." [FN99]

*1018 As the Lotus opinion noted, one of the members of CONTU [FN100] believed that a computer program was analogous to an "object ... designated to do work-for example, the cam of a drill" [FN101] and therefore noncopyrightable as a "useful article." Judge Keeton's response to this argument rang hollow: "[T]hings that merely utter work, such as the cam of a drill, are not copyrightable. It is not true, however, that every aspect of a user interface that is 'useful' is therefore not copyrightable [otherwise whenever] an intellectual work achieve[d] the feat of being useful ... [it would] destroy[] copyrightability ...." [FN102] Judge Keeton provided no basis, however, to allow one to distinguish between the utilitarian aspects of a drill cam and those of a user interface other than to say that the former "merely utters work." Given that the raison d'etre of a user interface is to perform the functions of conveying and receiving information, it is difficult to see how a user interface "utters work" to a lesser degree than a drill cam.

To be fair, Judge Keeton recognized the inconsistency of his arguments and pointed to contradictory statutory constraints as the cause: "[The decisionmaker] must not allow one statutory mandate-that functionality or usefulness is not itself a basis for copyrightability-to absorb and destroy another statutory mandate-that elements of expression are copyrightable." [FN103] The inherently utilitarian nature of a user interface and the inconsistency in statutory mandates further demonstrate the impropriety of applying copyright law concepts to the nonliteral aspects of computer software.

3. Protection of "Functionally Optimal" Expressions

In Lotus, the court discussed the theory of scientific advancement in the field of computer software [FN104] and indicated agreement, in theory, with both the "stepping stone" concept [FN105] and with the idea that some expressions may be functionally optimal. [FN106]

First, innovation in computer programming is advanced as each programmer builds upon the ideas of previous programmers. Second, some of the innovative ideas may be expressed in a particular way that is so effective or efficient that the expression becomes standardized throughout the field even though the idea is capable of being expressed in other ways-that is, even though *1019 the particular expression is not an essential detail to every expression of the idea. [FN107]

Although noting the unique aspects of computer software development, the Lotus court limited permissible copying to borrowing the ideas of predecessors and prohibited the taking of particular expressions, even if such expressions have become a functionally optimal industry standard. [FN108]

Requiring an element to be "essential" to expressing the underlying idea before denying copyright protection demonstrates the impropriety of applying the traditional copyright concept of "merger" in the area of software development. The touchstone of copyright is that an expression of an idea is copyrightable, but the underlying idea is not. [FN109] A particular expression, however essential to the expression of a particular idea, is considered to have "merged" with the idea and does not receive copyright protection. [FN110] Although this concept may be applied properly to works of a creative nature, it falls short in the area of computer software. For example, suppose a commercial developer creates a particular software expression that is a functionally optimal expression of the underlying idea and is destined to become an industry standard. Under copyright law, this developer could monopolize this expression for as long as seventy-five years. [FN111] Assuming the original developer would be unwilling to license his product, any other developer wishing to use the same idea, which is fair game under copyright law, would have to create a different expression, even though such expression necessarily would be inferior and less efficient. This outcome seems to contradict the very purpose of the copyright law, "[t]o promote the Progress of Science." [FN112] Judge Keeton understood the significance of this problem, but believed his authority to remedy it was limited by a lack of statutory authority. [FN113]

The case of Accolade, Inc. v. Distinctive Software, Inc. [FN114] demonstrates some of the problems unique to the software industry. Distinctive Software, Inc. (DSI) developed the software for a video game for publication and marketing by Accolade under a license that gave Accolade the copyright to the finished product-"The *1020 Duel." [FN115] Included in the finished product, however, were a number of "industry standard library codes" used to perform basic computer functions. [FN116] Subsequently, DSI developed and marketed a competing video game, "Outrun," which Accolade claimed infringed their copyright on "The Duel." Accordingly, Accolade requested that DSI be enjoined from further marketing of "Outrun." The parties to the suit did not dispute that the two video games had a different "look and feel," nor did they dispute that the identical codes were used in both programs. [FN117] The defendant argued that these particular codes, or software elements, were unprotected expression because they were "necessary to virtually every computer game, and that it is industry practice to duplicate such subroutines from game to game." [FN118]

Although decided on other grounds, [FN119] this case depicts the problems that may arise in applying the "essential" requirement of the merger doctrine as applied in Lotus. [FN120] Given the limited range of expression, it is virtually impossible to determine what is "essential" to any given expression. The number of possible combinations of a particular expression is theoretically unlimited, or at least very great. Various software developmental constraints- for example, the requirements of high execution speed and compact size-however, reduce the number of practical combinations. [FN121] Furthermore, it is likely that the routines in Accolade would be almost identical to the originals even if developed anew, because the development would be undertaken by the same programmers, or at least programmers with intimate knowledge of, and familiarity with, the old code. [FN122] To force a software developer to concoct an expression that is different, but with the same substantive content, would be an artificial and undue burden, and likely would result in inefficient and inferior products being introduced into the market. [FN123] In other words, certain software expressions may be functionally optimal, and have no "viable substitute." [FN124]

*1021 Finding an element of a program to be functionally optimal, however, does not satisfy the higher threshold of either the "essential" requirement of Judge Learned Hand's Scale of Abstractions test, [FN125] or, the "necessary" requirement of the Whelan test. [FN126] A claim by a copyright-infringement defendant that the plaintiff's software product is a functionally optimal expression, merged with the underlying idea, and therefore cannot be the subject of copyright protection must be rejected under present merger law. Under the Scale of Abstractions test, functional optimality is an insufficient level of competitor need for the merger doctrine to apply. Only if a particular expression is essential-that is, no different expression is conceivable-will a court determine that competitor need for that particular expression is great enough to prevent its monopolization. As a result, a fundamental building block, such as a functionally optimal program, can be monopolized, and subsequent developers who wish to avoid liability can be forced to adopt suboptimal expressions of the underlying idea that are gratuitously different from the copyrighted program.

Various elements of the copyright law, such as its necessary subjectivity, proscription against protection for utilitarian articles, and high merger threshold, make its application to the nonliteral aspects of computer software inappropriate. Although the Lotus court and several others [FN127] have attempted to mold traditional copyright concepts to meet the unique needs of the computer software industry, these attempts have proven inconsistent, unpredictable, and overbroad. Without sufficient guidance by the legislature, further judicial extension of copyright law in the area of computer software is *1022 doomed to fail. Software developers may be tempted to look to forms of protection other than copyright. The available alternatives, however, each have problems of their own.

III. Alternatives to Sui Generis Protection and Their Problems

A. Patent Law Protection for Computer Software

Because patent law provides protection for a manifestation of an original idea, one possible method to provide more extensive protection for computer software would be to obtain a utility patent. [FN128] A patentee of a software invention possesses "the right to exclude others from making, using, or selling the invention throughout the United States." [FN129] In contrast to copyright protection, which only protects the expression of an idea and not the idea itself, [FN130] the exclusive patent right extends to the program's particular expression as well as to the idea underlying the invention and any equivalents thereof. Therefore, a patent on a software invention would furnish more extensive and predictable protection than is provided under the copyright law.

Under certain circumstances, a computer program may be eligible for protection under the United States patent law. [FN131] The probability, however, that software inventions will be readily accepted by the Patent and Trademark Office (PTO) is unlikely. [FN132] The Supreme Court's decision in Gottschalk v. Benson [FN133] held that a computer algorithm, taken alone, is per se unpatentable because issuance of a patent on such would result in a monopoly of a fundamental building block of science. [FN134]

Even a favorable later decision, Diamond v. Diehr, [FN135] which allows patentability if the computer program is only one part of an otherwise patentable process that "transform[s] or reduc[es] an article to a different state or thing," [FN136] has not alleviated completely the PTO's reluctance to issue patents for computer programs. Practical considerations involving lack of resources and expertise may be the basis for the PTO's nonacquiescence. [FN137]

*1023 Criticism of the PTO with respect to one recently issued patent for a software invention may be evidence that the PTO is, in fact, ill-equipped to handle applications for software inventions because of insufficient expertise and lack of adequate examining procedure. [FN138] Critics of the decision to issue the patent claim that the subject matter of the software was notoriously old and well known by those skilled in the art, and the resulting patent disclosed "absolutely nothing ... that would be of any use whatever" to practitioners in the field. [FN139] The truth of either of these allegations would conclusively bar a patent. [FN140]

More generally, it has been suggested that the majority of software inventions are undeserving of patent protection because of their relative lack of inventive contribution. As one observer asserts:

[T]he major obstacle [to patentability] is posed by the fundamental prerequisite of "invention" (encompassing the requirements of novelty and nonobviousness) ... It has been estimated that less than one percent of all computer programs in the United States are sufficiently innovative to meet the standard requirements for "invention." As a result of such practical difficulties, the use of patent law for the protection of computer programs has been limited to the relatively few programs incorporated in complicated process control or other mechanical systems. [FN141]

Utility patents, therefore, remain of little practical value as an avenue of protection for the vast majority of computer software.

Alternatively, some commentators have suggested that design patents may be useful in providing intellectual property protection for computer software. [FN142] A problem with this suggestion is that design patents are intended to provide protection for ornamental *1024 elements, [FN143] as opposed to functional elements that receive protection from utility patents. [FN144] Although a combination of functional and ornamental elements may be permitted, a design is not patentable if substantially every part of the design is dictated by functional considerations. [FN145] Arguably, the visual and other sensory aspects of a GUI are designed to perform the function of optimally conveying information to the user. To gain design patentability, a developer would have to claim that a significant part of the visual element of his new user interface is nonfunctional, that is, does not serve to convey information. This seems incongruous, at best, with the basic purpose underlying the GUI.

Furthermore, a design patent only protects the design of an entire article of commerce. [FN146] Infringement of a software design patent could occur only if a competitor produces a software product with a design substantially the same, so that ordinary consumers would buy the copy and think that they had purchased the original. [FN147] No protection is available for individual elements apart from the patented article as a whole. For example, if Apple Computer received a design patent for its Macintosh Desktop user interface, a competitor could nevertheless use separate elements of the interface, such as the Trash Can, [FN148] and avoid infringement as long as the entire package was not substantially the same. No protection for the Trash Can feature alone would be available under the design patent system.

Therefore, although an increasing number of patents are being issued on software inventions, the patent system is unlikely to become the primary way to protect intellectual property rights in computer software. More likely, software developers will attempt to extend the copyright law to suit their purposes better; this solution, however, is not without problems.

B. Possible Solutions Under Modified Copyright Law

As an alternative to a new statutory program for the sole protection of computer software, it is possible that the present copyright law might be extended or modified to address the current deficiencies. This may be done in one of two different ways: (1) by judicial *1025 development and interpretation, or (2) by legislative action. Both of these methods have significant problems.

1. Judicial Case Law Method

To protect nonliteral aspects of software expression that can be distinguished from the underlying idea, it may be desirable to allow the judicial system to continue to expand its interpretation of the copyright law, along the lines discussed in Part II. [FN149] In support of this position, two commentators have asserted that "traditional copyright protection for computer programs should not be dismantled for a new sui generis statute [because] the case law has generally proven sound in its application of traditional copyright principles to computer programs." [FN150]

Even the most recent, and arguably expansive, judicial interpretation on the scope of copyright protection for software has drawn support from certain quarters. Arguing that Judge Keeton's decision in the Lotus [FN151] case was a sound and proper progression in judicial interpretation of copyright protection for software, two practitioners have stated that the "Lotus court truly 'returned to basics' in re-emphasizing the fundamental importance of the idea-expression distinction in copyright law as it pertains to computer programs." [FN152] The authors expressed the ironic viewpoint that despite the Lotus court's abandonment of the "look and feel" [FN153] doctrine, which was an earlier judicially created concept designed to expand the protection of software programs, [FN154] the Lotus decision actually resulted in greater protection for computer programs. [FN155]

*1026 Other commentators have been less supportive of both the legal reasoning and the desirability of the outcome in the Lotus decision.

One particularly concerned observer stated that:

The recent court decision in Lotus Development v. Paperback Software is wrong for so many legal and technical reasons that it is difficult to know where to start discussing it.... [It may endanger] the historical way that U.S. law has sought to foster competition and improve the availability of better products for its citizens. [FN156]

This negative reaction stems from the arguably overbroad Scale of Abstractions test applied in Lotus. [FN157] The test sought to identify the protectable elements of a computer program, but, by its application, would allow the major actors in the computer software manufacturing business to monopolize unfairly the basic methods of human interaction with a computer. The Lotus test is so easy to manipulate that the outcome is largely dependent on the amount of time and money spent by a developer on legal fees. In effect, the developer with the most money may litigate a potential competitor into submission. Potentially, new entry into the software development market will diminish, and technological progress will decline.

Regardless of individual viewpoints about the desirability of the Lotus outcome, it is apparent that continued judicial extension of copyright law to accommodate software is fraught with pitfalls. First, even if a court wishes to apply copyright protection to software expansively, it cannot provide protection of an idea without contravening the basic premise of copyright law: Expressions of ideas are copyrightable, the underlying ideas themselves are not. [FN158] Arguably, the nonliteral elements of a computer program would be protected better by a form of "idea protection" similar to patent law. Providing such protection under the auspices of copyright law, however, is impermissible, [FN159] and any judicial decision to the contrary would exceed statutory authority.

Second, advances in computer and software technology are eclipsing the industry's capability to bring the items to market in a commercially usable form. Because the technological lifetime of a typical software product is only two to three years, it is highly unlikely that the slower-evolving judge-made law would be able to keep pace with these advances. For example, recent advances in artificial intelligence technology will obfuscate the difference between a program and the data on which it operates. [FN160] These advances, and others yet unforeseen, will blur the distinction between idea and expression further to a point in which it may no longer have any useful meaning. Already, the idea-expression dichotomy used to *1027 determine the protectable aspects of a copyrighted work may yield completely arbitrary results when applied to computer programs.

With each advance in the field of software technology, the application of copyright protection becomes more complex and less predictable. The relatively straightforward application of copyright law to a case of literal copying of source code has been replaced by more complex issues such as whether the nonliteral elements of a GUI have been copied illegally. The unpredictable application of copyright law to these issues has created a situation where developers will not be able to determine conclusively whether they impermissibly copied. Developers can obtain their "answer," in the form of a judgment, only after a long and expensive trial. Assuming this trend continues, the inevitable result is that securing intellectual property protection will become the most significant expense in developing a software product. Eventually, the burden of securing protection will become so great as to be cost prohibitive.

Already, industry observers are complaining of the unfairness resulting from a "well-funded plaintiff ... obfuscat[ing] the technical arguments" and convincing a technically unsophisticated judge to extend excessive protection, without "regard[] [for] the applicable law and sound public policy reasons behind legal principles." [FN161] Another writer complains that the unpredictability of court decisions in software copyright infringement suits requires every developer to "spend all the dollars running their products past attorneys to determine ... any [potential] infringement on what they are doing." [FN162] Arguably, the Scale of Abstractions test used by Judge Keeton [FN163] is so unpredictable that "[t]he only sure conclusion of Lotus' victory is that lawyers will be partners in development." [FN164]

A third reason why continued judicial extension is untenable is that many of the problems with recent software copyright decisions are the result of the judiciary's lack of expertise in a highly technical area. The accelerated rate of advancement in software technology only will aggravate this shortcoming. The judge's information for deciding these technologically complex cases comes only from the obviously biased litigants. Often, the party with the most money who can hire the best and most convincing experts wins. To ensure consistent and informed decisionmaking, judicial determinations regarding the protectable aspects of software should be made only with the aid of neutral experts.

Modern software programs are on a level of technical complexity *1028 equivalent to those inventions protected under the patent laws. To provide expertise and consistency to the application of the patent law, Congress provided for an expert agency, the PTO, [FN165] as well as a specialized United States Court of Appeals, the Federal Circuit. [FN166] The PTO, in conjunction with a patent solicitor, is responsible for defining the "metes and bounds" of the invention-namely, the novel and innovative subject matter. In addition to notifying the public precisely which advances in the art have been granted an exclusive monopoly, the determinations made by the PTO during the patent application process are used by a court in determining the scope of an invention and when it has been infringed. A court will defer to the expertise of the agency in so ruling. [FN167] In contrast, a judge's determination in a copyright infringement case of the protectable aspects of a computer program and the question of infringement is based upon the necessarily biased opinions and technical expertise proffered by the litigants. The Federal Circuit, which has exclusive jurisdiction over patent appeals from the United States District Courts and from the PTO, [FN168] was established, in part, to provide a consistent response to the widely varying views on patent issues among the several circuits. [FN169] No such exclusive jurisdiction exists over copyright matters, so the Federal Circuit cannot provide the needed consistency.

Fourth, any extensions that a court may make to facilitate added protection to computer software invariably will have an effect on the common law aspects of copyright as they apply to other forms of expression. Because copyright law applies to several forms of expression other than computer software, any time a judge makes a decision to reconcile copyright law with the unique qualities of software, that decision also impacts every other form of expression covered by copyright. This added complexity inevitably will cause problems and confusion in the application of copyright law to expressive works other than computer software.

Finally, notions of judicial restraint provide perhaps the most compelling reason why the task of extending protection for computer software should not be entrusted to the judiciary. Instead, the responsibility for modifying the intellectual property protection to be provided to a technology as complex and vital as computer software should be entrusted to a socially responsive legislature. *1029 Without the facts and expertise necessary to formulate detailed rules, the judiciary is uniquely ill-equipped to make this type of determination. [FN170]

In sum, it is apparent that continued judicial extension of the copyright law to accommodate advances in software technology is misdirected. Arguably, the statutory limitation precluding copyright protection of an "idea, procedure, process, [or] system" [FN171] already has been exceeded by current judicial decisions. [FN172] In addition, each extension of copyright law to accommodate the peculiar aspects of software as an expressive work will add a layer of complexity to copyright analysis of all other forms of expression. Moreover, each new breakthrough in software technology will make the idea- expression analysis more unpredictable and will aggravate the court's lack of technical expertise. Many of these problems could be avoided, however, by putting the burden on Congress to amend the copyright statute to provide solutions for the problems inherent in software copyrights, and to provide much-needed guidance to the judiciary. As will be seen, however, this solution also has problems.

*1030 2. Further Congressional Amendments to Copyright Law

As an alternative to extending copyright law through judicial gloss, Congress might amend the current copyright statutes to address the unique problems presented by software technology. This solution has been used with some frequency with respect to other forms of expression, and has met with arguable success.

Ongoing statutory amendments are not unworkable, and may be inevitable, as society continues to present previously unanticipated forms of expression that challenge the existing intellectual property framework. A program of protection with substantial statutory and case law history should not be thrown out casually and replaced by an entirely new sui generis legislative program. If systemic problems can be alleviated with a reasonable degree of legislative tinkering, then Congress should follow that course of action. For example, the evolution of copyright law by the iterative amendment approach has worked successfully for other media including: phonorecords (sound recordings), motion pictures, reprography, and audio/video recorders. [FN173]

The legislative amendment approach, however, presents its own set of problems. First, although there are no significant constitutional impediments prohibiting Congress from extending statutory copyright protection for computer software beyond mere expression into the realm of idea protection, [FN174] Congress cannot provide idea protection without contravening the basic premise of copyright law: Expressions of ideas are copyrightable, the underlying ideas themselves are not. [FN175] This position was first enunciated by the Supreme Court in 1879 and later embraced by Congress in the Copyright Act of 1976: "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." [FN176] If Congress were to extend copyright protection to the underlying ideas of software, it would have to repeal this section, at least as it relates to computer software, and effectively overrule over one hundred years of copyright law precedent.

A second problem with amended copyright statutes is that they will not solve automatically the issues of unpredictability and inconsistency in application that result from the judiciary's lack of technical expertise. [FN177] Instead, Congress would have to create a specialized administrative agency to provide neutral technological expertise, or a specialized court to inject doctrinal stability into *1031 software copyright decisions, or both, as was done in the realm of patent law. [FN178]

A third concern is that any amendment attempting to remedy software-specific problems will affect the application of copyright law to all other forms of expression traditionally covered by copyright-not just computer software. For example, the recently proposed Copyright Amendments Act of 1990, [FN179] that would have addressed nonsoftware problems collapsed in the Senate because of the Act's perceived overbroad effects. [FN180]

The Act had proposed, among other things, to expand the doctrine of "fair use" that permits copying of otherwise copyright-protected material for purposes of study, teaching, or criticism. [FN181] This expansion would allow researchers and historians to quote from unpublished works, such as personal letters and diaries, to the same extent that they were allowed to quote from published works. [FN182] Although the Act would have significantly benefitted journalists and scholars, it was defeated because of lobbying efforts by members of the software industry, who claimed that "[m]any computer programs are unpublished and therefore would be subject to more liberal fair use under the legislation." [FN183] Similarly, if the copyright statutes were amended to address a software-related problem, the effects on other forms of expression protected by copyright law would be uncertain and perhaps detrimental to other industries.

Effects of an overbroad amendment could be avoided, however, by explicitly limiting its effect to a particular medium of expression. For example, the recently defeated bill seeking to modify the scope of fair use could have provided that the modifications applied only to literary works other than computer programs. Such a limitation likely would have satisfied the software industry opponents of the bill. Similarly, in modifying the copyright statute to address software-related issues, the legislature could alleviate any effects of overbreadth by specifically stating either that "this provision applies to computer software exclusively" or that "this provision applies to all copyrightable expression except computer software." A significant number of these specificity exceptions, however, would result in the emergence of two separate programs of copyright law: one *1032 program for traditional expressive works, and another program created separately to protect software expressions. The program pertaining to software likely would become less susceptible to analysis through common law copyright concepts. In fact, the recognizability of "copyright" protection for computer software would be in name only. Any initial benefits gained by retaining a history of statutory amendments and case law precedent, and not incurring the inevitable trouble and expense of developing an entirely new and separate sui generis program for software protection, would disappear quickly in a labyrinth of exceptions. [FN184]

Another danger of amending the copyright statute to provide an effective type of idea protection in addition to the existing expression protection is that "copyright protection attaches automatically, without prior expert examination .... Hence, it could defraud the public to allow a copyright monopoly over ideas." [FN185] In effect, a copyright owner under this hypothetically extended copyright protection would receive a bundle of rights somewhat analogous to patent protection. Under the patent system, however, an invention must be found to be truly novel before a patent, along with its broad power of exclusion, is granted. A system without a prerequisite novelty investigation could defraud the public-a monopoly might be granted though the underlying idea already belonged in the public domain.

IV. Suggested Legislative Sui Generis Program of Software Protection

A. Feasibility of Legislation

Although some commentators argue that it would be impracticable to expect Congress to enact separate legislation to provide intellectual property protection for each new technology that does not fit neatly into the existing intellectual property framework, [FN186] the importance of a particular technology to the national economy may warrant such attention. The Semiconductor Chip Protection Act of 1984, [FN187] is an example of such a technology receiving independent treatment. [FN188] Based on the importance of the computer software industry, it is reasonable to expect similar consideration.

This Note proposes a sui generis legislative plan to define and regulate intellectual property rights in computer software. Under the plan, a new agency would be created to provide the neutrality and expertise needed in making informed decisions in this complex *1033 field. The plan would incorporate various aspects from existing intellectual property frameworks, such as copyright, patent, and trademark law, along with new aspects not yet implemented, to tailor the program to the exact needs of the software industry and to best protect the economic interests of the United States. The specifics of this sui generis program are set forth below.

B. Elements of the Legislative Plan

1. Freeze Copyright Structure for Software

The first step would be to freeze the current copyright system with respect to computer programs. Anyone who had a current copyright on a piece of software would have to refile under the new system. The purpose of refiling is to compile a comprehensive database of all the outstanding software inventions and their owners. This database is desirable for at least four reasons.

First, a comprehensive collection of the existing body of software knowledge, if available to the public, would provide an invaluable resource in the research and development of new software inventions. Second, one of the features of the plan, discussed below, is that the newly created expert agency would have to determine the "metes and bounds" of the invention-define which portions are truly novel and worthy of protection and which have been invented before and do not qualify as a "new" or "novel" software invention. A determination of novelty is made relative to the existing body of knowledge, [FN189] either protected-in the form of a patent, trademark or copyright-or belonging in the public domain. One purpose of refiling, therefore, would be to facilitate a comprehensive collection of software prior art by which to compare the novelty of other software inventions. Third, it is important that the public be aware of what knowledge is owned by others, therefore restricted in use, and what knowledge lies in the public domain, therefore available for unlimited free usage. Plainly, a database of the software inventions currently owned would aid in determining what knowledge remained in the public domain. Fourth, the records currently in the Copyright Office do not contain adequate information for making the above-described determinations, because only a general description of the program is required. [FN190] In addition, none of the filed programs are assured of novelty as the Copyright Office only registers programs without examining them for novelty. [FN191]

*1034 Following the freezing and refiling of software copyrights, any pending lawsuits either could proceed to adjudication or be dismissed without prejudice or preclusive effect. The parties would be allowed to file in the new agency where initial determinations as to ownership and novelty of specific aspects of a program would be made.

2. Need to Define the "Metes and Bounds" of Software Inventions

The new filing system would be substantially more descriptive of the work to be protected than is currently required for copyright registration. As mentioned, only a general description of the program is now required. [FN192] In fact, copyright registration does not even mandate the filing of a complete copy of the source code, the most pure form of expression of a computer program. [FN193] This absence of an identifying description has at least two detrimental consequences. First, it provides a limited monopoly for the software in question without providing public disclosure of the workings of the inventive aspects. The public has the opportunity to observe the output of the program but not the underlying processes by which it is accomplished. Providing exclusive rights to inventors without requiring public disclosure of the underlying concept violates the "intellectual property bargain." [FN194] Creators gain their monopoly without contributing to the cumulative public store of scientific knowledge. [FN195]

Second, requiring only a minimal amount of disclosure for copyright protection to attach allows software developers to maintain a "floating copyright," whereby the developers may continually change aspects of the program without updating their copyright registration. The floating copyright is needed in part because it would be impractical to require developers to resubmit an entire listing whenever they made any minor change to their code, such as correcting minor "bugs" in the program. The informational value of a copyright filing, however, is already minimal; it is rendered virtually worthless by allowing an expansive "floating copyright." The public has no idea of what is actually copyrighted at any one time and therefore no idea of what knowledge belongs in the public domain. Without a clear indication of what is protected and what is in the public domain, it is virtually impossible for software developers to *1035 know if they are infringing another's intellectual property rights. The lack of predictability results in an increased likelihood of litigation. [FN196]

The proposed filing system would eliminate these problems by requiring an extensive package describing the software to be registered. For example, those seeking protection would be required to provide a complete copy of the source code. In addition, other items such as flow diagrams, interface descriptions, and a video tape of an actual run-time session would help to define the system. Because many of these descriptive documents regularly are used in the development of a software system, it would not be overly burdensome for an applicant to provide this information. The submitted information could be updated either on a periodic basis or each time that the developer released a new version of his program.

Submitted materials would be used to determine the scope of protected features of a program. In much the same manner as patent prosecution, [FN197] an agency examiner in conjunction with the applicant's attorney-or the applicant pro se-would agree upon the scope of the protection to be provided for the submitted program. Assuming it passed certain threshold requirements, the program as a whole would be protected. If the individual specific features or modules were novel in their own right, they too would be protected.

The agency in question would have multiple library categories to cross- catalogue the software invention as appropriate. For example, a new spreadsheet program as a whole would be listed in the "Business," "Financial," and "Data Analysis," categories. If the program also contained, for example, a novel number-sorting algorithm, that portion would be listed in the "Sort Algorithm" category.

To facilitate, indeed encourage, public access to this information, it would be stored on-line in a database that the public could use to engage in general research or to determine the extent of a competitor's program. For software inventions in the public domain, including those no longer within the statutory term of protection, the public could download the source code for use in their program. A nationwide depository of software-a Public Domain Algorithm Library-would be a substantial step in advancing software technology; all potential software developers would have access to a vast store of computer algorithms and problemsolving techniques, and thereby greatly reducing duplication of effort in the software development field. It is thought that similar practices by the Japanese software industry are narrowing the gap in American leadership in *1036 software technology. [FN198]

The exact source code for inventions still under protection, however, would not be accessible until the protection term had expired, at which time it would enter the public domain for unlimited use. Although this results in less than complete disclosure in the "intellectual property bargain" [FN199] sense, it is necessary because of the "difficulty of exclusion" [FN200] nature of software. Absent this confidentiality, any number of software copyists, or "pirates," easily could duplicate the developer's product to use for their own personal use or to illegally sell duplicates. This piracy could result in a significant loss of revenue by developers. Even though conduct such as piracy would continue to be illegal, under both the new protection scheme and existing intellectual property schemes such as unfair competition law, [FN201] the enforcement problems would be insurmountable if protected source codes were readily available to the public.

Although withholding the source code until the end of the protection period would result in diminished consideration in the "intellectual property bargain" sense, the proposed statutory plan could account for this lessened disclosure by requiring the applicant to submit the equivalent of a technical paper. The paper would allow others with ordinary skill in the field to reproduce the results with a reasonable amount of effort. This level of disclosure is similar to the requirements imposed both by scientific associations in determining whether to accept a submitted paper for publication, and by the patent law "enablement" requirement. To obtain a patent an applicant must disclose "a written description ... of the manner and process of making and using [the invention], in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains ... to make and use the same." [FN202]

3. Duration of Protection Term

The statutory term for protection would be relatively short compared to that of copyright, [FN203] patent, [FN204] and trademark. [FN205] Because the software industry is advancing so rapidly, a one-year lead time would provide a reasonable opportunity for a developer to gain an *1037 advantage and establish a significant market share. Furthermore, the "rapid advancement of software ... means that software producers realize most of the return to research and development within a short time after they market their products." [FN206] Based on these factors, a statutory protection period would last from three to five years, which gives innovators sufficient time to exploit their programs commercially. The term of protection should not, however, be so long as to hinder technological advancement by permitting the monopolization of a concept that could potentially revolutionize the industry if it were available to be utilized and improved upon by others.

4. Novelty Determination

Under this new statutory plan of intellectual property protection for computer software, a prerequisite for protection would include a confirmation of the novelty [FN207] and nonobviousness [FN208] of the software invention. Registration would require an initial examination by the expert agency to determine novelty and degree of technical advance, similar to the patent system. [FN209] Although this novelty check would necessarily slow the registration process and result in additional cost to the applicant, it is crucial to notify the public of technology available for unrestricted use.

Because the proposed system would utilize a novelty examination, any non- novel applications would be weeded out on a per case basis during the initial phases of the examination process. Thus, the public reasonably could be assured that any software invention possessing a registration was novel and, thus, truly deserving of protection. In contrast, a registration system that did not include an examination for novelty would result in a significantly large number of ultimately invalid registrations being treated as valid until proven otherwise in court or in an administrative proceeding. The public would be unable to discern which of these registrations were, in fact, novel software inventions. Developers would be unable to determine, except in blatant cases, when their product was being infringed. Nor would potential developers be able to predict with any confidence that they were developing a program that did not infringe the program of another. Moreover, any benefits gained by *1038 applicants from not requiring an initial novelty search would be lost quickly by the increased likelihood that they would be sued or would have to sue another.

The nonobviousness prerequisite for statutory protection of a software invention would ensure that a monopoly would not be granted unnecessarily. Granting protection to minuscule improvements that would be "obvious ... to a person having ordinary skill in the art" [FN210] would provide a benefit to the developer disproportionate to his contribution to the field and would result in a greatly increased number of monopolies. Moreover, the sheer volume of active registrations would necessarily complicate all other registration applications and infringement suits.

Because of the rapid advancement of software technology and the relatively short term of protection afforded under the new scheme, the "prosecution" time-that is, the time from the filing of the initial application to the time a certificate of registration actually is issued-would be kept at a minimum to avoid hampering progress in software technology and effectively diminishing market lead time. For instance, the current estimated turn-around time of a patent application, eighteen months, [FN211] would be an unacceptably long period to await the determination of the scope of protection. As a practical matter, speed of prosecution would be a high priority in developing this new scheme.

5. Mandatory Reasonable Royalty License

The remedy for infringement would be a mandatory reasonable royalty license on a pro rata basis. This would, in effect, eliminate a great number of potential infringement cases. The opportunity for competitors in the industry to have access to, and improve upon, each other's ideas would result in free competition and the dissemination of knowledge. The payment of a reasonable royalty from the copyist to the originator would assure that the original innovator had sufficient incentive to spend the time and money in advancing the technology. The question of "reasonableness" would be based upon the expense incurred by the originator and the degree to which the originator's ideas were utilized in the copyist's derivative program.

An actual license executed between parties would supersede any constructive mandatory license under the new protection scheme. [FN212] Clearly, an incentive would be needed to encourage private parties *1039 to negotiate their own license arrangement, rather than require administrative or judicial intervention. Examples of incentives may include the award of costs or attorney's fees to a party unwilling to negotiate on good-faith terms, or against a party who chooses to copy first and not ask permission until sued.

Currently, developers simply may refuse to license any portion of its software to competitors. The prospect of being able to exclude competitors for the lengthy copyright term and still gain extensive protection by liberal application of the copyright law is no doubt desirable for established developers. This exclusion, however, is arguably detrimental to the software industry, new entrants to the market, and society as a whole. Therefore, the proposed program, by precluding registration holders from withholding use of their protected expression and ideas, would facilitate the flow of information and minimize anticompetitive activities.

6. "Fair Use" Allowed

The proposed plan would incorporate the "fair use" doctrine in a form similar to that of the present copyright and patent laws. [FN213] The doctrine of fair use allows use of a work for "purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research." [FN214] In effect, a researcher or academician would receive a free mandatory license as long the use was for nonprofit or noncommercial educational purposes, and such use did not adversely affect the value or potential market for the protected software element.

7. Infringement Determinations

Infringement would be determined by viewing the entire descriptive package as a whole, not just the similarity among single elements. For example, developers might combine a number of "old" public domain software routines in a fashion that is truly innovative and novel. That each element may be found elsewhere should not serve to preclude the new combination from protection. If each or any of those discrete elements were themselves protected, however, the copyist who used them in combination would be liable for reasonable royalties to the originator based on the pro rata usage of protected elements in the new program. The determination would be a weighted average based on such factors as the percentage of overall effort, the technical significance, and the commercial significance of the copied elements. For instance, in the Lotus case, it was determined that Paperback Software's product, VP-Planner, had *1040 copied Lotus' user interface. [FN215] Because development of the user interface was the result of a significant expenditure by Lotus and because the commercial desirability of VP- Planner depended on this similarity, it would be reasonable to set the reasonable royalty at a very high figure (seventy to eighty percent). If the copied interface were less significant in the total technological and commercial worth of VP-Planner, then the reasonable royalty figure would be proportionately lower. As a rule of thumb, the closer to verbatim copying, the higher the royalty percentage. Obviously, a straight bit-for-bit verbatim knock-off should result in a one hundred percent royalty.

8. Independent Creation Defense

The range of useful expression in the field of software development is somewhat limited by its functionality. [FN216] Therefore, it is likely that two independent developers could produce separate software products that, though not identical as a whole, possess similar or even identical elements. To account for this possibility and to encourage innovation further, independent creation would be an affirmative defense to infringement. Currently, a plaintiff in a copyright infringement suit must prove that the defendant had access to the copyrighted work. [FN217] Shifting the burden of proof to the defendant would give greater protection to the registration owner of the software and would act as an incentive to register a new program. At the same time, the availability of the independent creation defense would avoid the unfairness of punishing someone who had truly developed a similar concept independently. In contrast, the current patent law system makes no provision for independent creation. Arguably, software inventions should receive different treatment because of the rapid state of advancement and the narrower range of expression in the field. Applications programmers can use only the relatively narrow range of programming languages available, which in turn may be limited by the range of available hardware. Therefore, the protection scheme would account for the greater likelihood that more ideas are likely to be "ripe" for simultaneous invention at any one time in the field of software development.

9. Piracy Protection for Nonregistrants

Because it may be viewed as fundamentally unfair to require full disclosure before any protection is provided, it may be useful to borrow the aspect of copyright law that would provide protection against piracy-verbatim copying-with only minimal disclosure. This special exception, however, may be an unnecessary duplication *1041 of the protection already provided by other extant intellectual property systems. [FN218]

Conclusion

The sui generis plan of intellectual property protection outlined in this Note is only a starting point on the path to appropriate protection for computer software. [FN219] As has been shown, the use of copyright law in this area is inappropriate. Correctly applied, the copyright law would give no protection to the underlying idea of a software product, even though this idea may be the most significant aspect of a developer's contribution to the field and the result of lengthy and costly development. Failure to give protection in this situation clearly acts as a disincentive to innovation. On the other hand, recent applications of the copyright law arguably have given expansive "idea" protection to certain elements of a software product. Because of the relatively lengthy duration of protection under copyright law, which far exceeds the technological lifetime of any copyrighted software product, providing such expanded protection under copyright law may result in stagnation of technological progress by effectively withholding fundamental building blocks of creativity from the public. To balance these problems, and to pursue effectively the underlying tenet of the intellectual property laws, a new program of protection is needed that provides patent-like idea protection for software products as a whole and for novel components therein, but that lasts only long enough for developers to recoup their costs through adequate market lead time. In this way, software developers would receive the needed incentive to spend time and money on innovative products, while the scientific base would not be monopolized by a few large developers who have the necessary funds to litigate potential competitors out of existence.

FN1. U.S. CONST. art. I, 8, cl. 8.

FN2. 35 U.S.C. 1-376 (1988).

FN3. 17 U.S.C. 101-810 (1988).

FN4. Id. 901-914.

FN5. See, e.g., Richard H. Stern, The Bundle of Rights Suited to New Technology, 47 U. PITT. L. REV. 1229, 1231 & n.2 (1986) (describing the competing policy goals as they developed in early intellectual property statutes).

FN6. See, e.g., Whelan Assocs. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1235 (3d Cir. 1986) (stating that "the purpose of the copyright law is to create the most efficient and productive balance between protection (incentive) and dissemination of information, to promote learning, culture and development"), cert. denied, 479 U.S. 1031 (1987); Rosemont Enters. v. Random House, Inc., 366 F.2d 303, 307 (2d Cir. 1966) (stating that copyright holders occasionally must subordinate their financial interests "in the fields of science, law, medicine, history and biography"), cert. denied, 385 U.S. 1009 (1967); see also Jane C. Ginsburg, A Tale of Two Copyrights: Literary Property in Revolutionary France and America, 64 TUL. L. REV. 991, 992 (1990) (noting the American law "makes the public's interest equal, if not superior, to the author's ... as a means to maximize production of and access to intellectual creations").

FN7. See, e.g., Pamela Samuelson, Creating a New Kind of Intellectual Property: Applying the Lessons of the Chip Law to Computer Programs, 70 MINN. L. REV. 471, 513-14 (1985).

FN8. 17 U.S.C. 101-810 (1988).

FN9. See Baker v. Selden, 101 U.S. 99, 102-06 (1879). In this case, the United States Supreme Court ruled that the author of a copyrighted book describing a new bookkeeping method was not protected from others using the method; rather, the author was only protected from others reproducing his expression of the bookkeeping ideas. Id. at 104-05. The underlying basis of this case was incorporated into the copyright statutes. See 17 U.S.C. 102(b) (1988) ("In no case does copyright protection ... extend to any idea ....").

FN10. This dichotomy alternatively is referred to as the "fact/expression" dichotomy. Feist Publications, Inc. v. Rural Tel. Serv. Co., 111 S. Ct. 1282, 1290 (1991).

FN11. See, e.g., Feist, 111 S. Ct. at 1290; Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539, 556-57 (1985); Whelan Assocs. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1235 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987). The Whelan court emphasized that although the copyright plaintiff could protect against copying of his particular dental- billing computer program, he could not preclude others from writing dental- billing computer programs of their own. Whelan, 797 F.2d at 1238-40.

FN12. 17 U.S.C. 102(a) (1988) ("Copyright protection subsists [in] the following categories: literary works; (2) musical works ...; (3) dramatic works ...; (4) pantomime and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; and (7) sound recordings.").

FN13. See, e.g., Whelan, 797 F.2d at 1248 (noting that "copyright protection is not limited to the literal aspects of a computer program, but may extend beyond the programs' literal code to their structure, sequence, and organization"); Lotus Dev. Corp. v. Paperback Software Int'l, 740 F. Supp. 37, 68 (D. Mass. 1990) (extending copyright protection to the "menu structure," or user interface, of a computer program including "the choice of command terms, the structure and order of those terms, [and] their presentation on the screen"); Telemarketing Resources v. Symantec Corp., 12 U.S.P.Q.2d (BNA) 1991, 1996 (N.D. Cal. 1989) (refusing to extend copyright protection to certain functions in a computer software program for creating and editing outlines because the "functions were inherent in the idea of a computer programming outline"); Ashton-Tate Corp. v. Ross, 728 F. Supp. 597, 602 (N.D. Cal. 1989) (refusing to extend copyright protection to a "list of labels for user commands" because the commands constituted unprotectable ideas rather than protectable expression), aff'd, 916 F.2d 516 (9th Cir. 1990); NEC Corp. v. Intel Corp., 10 U.S.P.Q.2d (BNA) 1177, 1184 (N.D. Cal. 1989) (extending copyright protection to the computer program in issue, but finding no infringement even though approximately 90 of NEC's subroutines were "substantially similar to Intel's corresponding items," because the subroutines involved simple, straightforward operations in which close similarly in approach was not surprising); Healthcare Affiliated Serv., Inc. v. Lippany, 701 F. Supp. 1142, 1151 (W.D. Pa. 1988) (refusing to extend copyright protection to "the methodologies ... used to develop ... software programs" because the methodologies were "more akin to 'idea,' which must remain in the public domain," than to protectable "'structure, sequence, and organization"') (quoting Whelan, 797 F.2d at 1151); Pearl Sys. v. Competition Elecs., 8 U.S.P.Q.2d (BNA) 1520, 1524 (S.D. Fla. 1988) (extending copyright protection to the computer program in issue and finding infringement on the basis of two subroutines in the infringing program bearing "substantially similarity" to subroutines in the copyrighted program); Digital Communications Assocs. v. Softklone Distrib. Corp., 659 F. Supp. 449, 455 (N.D. Ga. 1987) (concluding that "copyright protection of a computer program does not extend to screen displays generated by the program"); Synercom Technology, Inc. v. University Computing Co., 462 F. Supp. 1003, 1013 (N.D. Tex. 1978) (refusing to extend copyright protection to the sequence and ordering of data, or user interface, for a statistical analysis program because it was a functional object like the "'figure-H' pattern of an automobile stick").

FN14. 740 F. Supp. 37 (D. Mass 1990).

FN15. OFFICE OF TECHNOLOGY ASSESSMENT, U.S. CONGRESS COMPUTER SOFTWARE AND INTELLECTUAL PROPERTY: BACKGROUND PAPER 1 (1990) [hereinafter OTA BACKGROUND PAPER].

FN16. Id.

FN17. Id. at 5.

FN18. Id.

FN19. Id. at 2-3; see also Evelyn Richards & T.R. Reid, Mass Production Comes to Software: Japanese Seek to Challenge U.S. Lead by Simplifying Process, WASH. POST, Dec. 12, 1990, at A1 (reporting that recent advances by the Japanese in mass production techniques of software may threaten the market dominance of United States software development companies).

FN20. BARRY W. BOEHM, SOFTWARE ENGINEERING ECONOMICS 18 (1981).

FN21. NATIONAL COMM'N ON NEW TECHNOLOGICAL USES OF COPYRIGHTED WORKS (CONTU), FINAL REPORT 20-21 (1978) [hereinafter CONTU FINAL REPORT].

FN22. See, e.g., John K. Halvey, Comment, A Rose by Any Other Name: Computer Programs and the Idea-Expression Distinction, 34 EMORY L.J. 741, 769 (1985). The factor arises because, regardless of the sophistication or complexity of the program in question, even the most unsophisticated computer user can copy the program for personal benefit. The simplicity and lack of expense involved in such copying makes it virtually impossible to "exclude" copyists from the market absent legal remedies. Even the copy protection schemes (special software instructions imbedded within a program to prevent copying of the program) traditionally used by software manufacturers to protect against illegal copying, have fallen into disuse for at least two reasons: (1) eventually, every copy protection scheme, no matter how sophisticated or clever, is "cracked," or defeated, by an equally clever manufacturer of copying programs; and (2) federal law permits users to copy a computer program that they purchased if the copy is either "created as an essential step in the utilization of the computer program ... or ... for archival purposes." 17 U.S.C. 117 (1988). Other media share this characteristic: Books may be photocopied easily; sound recordings may be duplicated easily using a tape recorder. In contrast, a complex machine such as a computer may be copied only by a copyist who possesses technical sophistication and manufacturing capability comparable to that of the original inventor.

FN23. See Evelyn Richards, White House Lists 22 Key Technologies, WASH. POST, Apr. 26, 1991, at F1 (citing a report from the White House Office of Science and Technology wherein "such key technologies as software" were described as "essential to preserving U.S. economic and military strength").

FN24. MCGRAW-HILL DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS 1504 (3d ed. 1984) (defining software as "[t]he totality of programs usable on a particular kind of computer, together with the documentation associated with a computer or program, such as manuals, diagrams, and operating instructions").

FN25. 17 U.S.C. 101 (1988).

FN26. The list of programming language statements is referred to as "source code." JERRY M. ROSENBERG, DICTIONARY OF COMPUTERS, DATA & TELECOMMUNICATION 490 (1984).

FN27. One of the most basic sorting algorithms is the "bubble" sort wherein the positions of neighboring data items are exchanged depending on their relative values. This process is repeated by two imbedded iterative loops until the sorting is complete. Other more sophisticated sort algorithms include the "heap" sort, "insertion" sort, "merge" sort, and "quicksort." See RICHARD CONWAY & DAVID GRIES, AN INTRODUCTION TO PROGRAMMING: A STRUCTURED APPROACH USING PL/I AND PL/C 261-62, 353, 363, 440, 473 (3d ed. 1979).

FN28. See, e.g., KENNETH L. BOWLES, MICROCOMPUTER PROBLEM SOLVING USING PASCAL (1977) (providing various already-existing techniques for problemsolving in the PASCAL computer language). The Motorola Corporation, for example, maintains an electronic bulletin board system through which programmers using Motorola- compatible equipment may transfer programs to their computers and thus avoid the time and expense of recreating commonly used programs.

FN29. Richards & Reid, supra note 19, at A16.

FN30. See Richard Stallman & Simson Garfinkel, Against User Interface Copyright, COMMUNICATIONS OF THE ACM, Nov. 1990, at 15, 16-18 (arguing that all software should be in the public domain and that any form of intellectual property protection for computer software is antithetical to the advancement of the technology).

FN31. Id.

FN32. Howard Root, Note, Copyright Infringement of Computer Programs: A Modification of the Substantial Similarity Test, 68 MINN. L. REV. 1264, 1292 (1984).

FN33. Lotus Dev. Corp. v. Paperback Software Int'l, 740 F. Supp. 37, 77 n.3 (D. Mass. 1990) (quoting ROBERT K. MERTON, ON THE SHOULDERS OF GIANTS: A SHANDEAN POSTSCRIPT 31 (1965)); see also Zechariah Chafee, Jr., Reflections on the Law of Copyright: I, 45 COLUM. L. REV. 503, 511 (1945) ("A dwarf standing on the shoulders of a giant can see farther than the giant himself.").

FN34. Stallman & Garfinkel, supra note 30, at 17.

FN35. For example, Microsoft Windows incorporates many features that resemble those found in the commercially successful Apple Macintosh Finder system.

FN36. See Stallman & Garfinkel, supra note 30, at 16 ("[U]sers do not like to retrain, not even to reap the benefits of a significant improvement. For example, the Dvorak keyboard layout, invented several decades ago, enables a typist to type faster and more accurately than is possible with the standard 'QWERTY' layout. Nonetheless, few people use it.").

FN37. Id. at 17-18.

FN38. See LaST Frontier Conference Report on Copyright Protection of Computer Software, 30 JURIMETRICS J 15, 28 (1989) (arguing that protection under copyright law should not extend to those aspects of a computer program that optimize in a way that has no "viable substitute"-that is, those aspects that are functionally optimal).

FN39. An example of the use of copying can be seen in the history of the development of the graphical user interface, popularized by Apple Computer with its Macintosh Desktop Metaphor. This concept was originated at the Xerox Palo Alto Research Center (PARC), the Stanford Research Institute (SRI), and the Stanford University Artificial Intelligence Laboratory. Apple Computer spent large sums of money on psychological testing to perfect the ergonomics of the Desktop interface, and successfully implemented and popularized the ideas of iconography (for example, a picture of a trash can on the screen represents a place to discard unwanted computer files), pull-down menus, and the mouse input device. Arguably, some of these features are functionally optimal expressions of the underlying ideas derived from the earlier work done at Xerox PARC. Now Apple Computer is attempting to exclude others from using many of these same concepts even though it was not the originator. In effect, Apple has made use of others' innovations, but it is unwilling to give the same courtesy to competitors. See, e.g., Apple's Suit Against Microsoft Ready for Trial, CHI. TRIB., Mar. 8, 1991, at C3 (reporting on the status of a copyright infringement lawsuit in which "Apple charges that Microsoft and Hewlett-Packard improperly copied essential features of the user interface offered by Apple on its Macintosh personal computer [even though] the Macintosh interface clearly was influenced by the Xerox work"); Andrew Pollack, Judge Favors Apple Stand on Copyright, N.Y. TIMES, Mar. 7, 1991, at D5 (reporting a decision by a district court judge refusing "to declare Apple's copyrights invalid because such screen displays were first developed by the Xerox Corporation"); Laura Ramsay, Apple's Lawsuit Trying to Close Microsoft's Windows, FIN. POST, Mar. 9, 1992, 5, at S21 (suggesting that Apple's lawsuit against Microsoft Corporation's Windows, based on the claim that Windows' "look and feel" encroaches on Macintosh's territory, was certain to succeed, and would result in an injunction preventing future sales of the Windows software).

FN40. A copyright registered by a corporation-that is, a "work made for hire"- lasts for 75 years. 17 U.S.C. 302(c) (1988). In contrast, the commercial lifetime of a software product is typically less than three years. See Stern, supra note 5, at 1247 & n.92 (stating that the patent examination process "usually takes more than three years [and] the commercial life cycle of software advances may not substantially exceed the length of the examination period").

FN41. U.S. CONST. art. I, 8, cl. 8.

FN42. The continued existence of the QWERTY keyboard presents an example of a truly suboptimal idea that nevertheless has lingered as a standard human interface. See supra note 36.

FN43. See Stallman & Garfinkel, supra note 30, at 15.

A user interface is what the user must learn to operate a machine. The user interface of a typewriter is the layout of the keys. The user interface of a car includes, for example, a steering wheel for turning, pedals to accelerate and reduce speed, and a lever to signal turns. When the machine is a computer program, the interface includes the computer-its keyboard, screen, and mouse- plus those aspects specific to the program. These typically include the commands, menus, programming languages, and the way data is presented on the screen.

FN44. See James P. Chandler, Proprietary Protection of Computer Software, 11 U. BALT. L. REV. 195, 201-13 (1982).

FN45. A copyist merely would need to purchase a copy of the desired program and study its screen outputs in an effort to duplicate the sensory elements of the program. It is a relatively simple matter to re-create a particular combination of pictures, colors, words, and commands if they are visible to the copyist. The nonsensory aspects of a computer program, such as computational algorithms or control sequences for internal machine functions, would not be susceptible to this type of copying.

FN46. See Elizabeth Ranney, 'Look and Feel' Discussed as Major Copyright Issue, INFOWORLD, Nov. 11, 1985, at 13 (stating that "the 'look and feel' of a computer software product often involves much more creativity and often is of greater commercial value than the program code which implements the product").

FN47. See, e.g., Whelan Assocs. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1237-38, 1248 (3d Cir. 1986) (finding liability even though copying of the literal source code was absent, because copyright protection of a computer program can extend beyond the program's literal code to its "structure, sequence, and organization"), cert. denied, 479 U.S. 1031 (1987); Lotus Dev. Corp. v. Paperback Software Int'l, 740 F. Supp. 37, 42-46 (D. Mass. 1990) (noting the rapid development of computer technology and its impact on judicial protection of various aspects of the computer).

FN48. Compare Synercom Technology, Inc. v. University Computing Co., 462 F. Supp. 1003 (N.D. Tex. 1978) (holding that the expression of nonliteral sequence and order is inseparable from the idea and, accordingly, is not copyrightable) and G. Gervaise Davis, Airing Both Sides of the "Look-and-Feel" Debate, COMPUTERWORLD, Aug. 13, 1990, at 21 (arguing that Lotus "is wrong for so many legal and technical reasons that it is difficult to know where to start discussing it") with Whelan, 797 F.2d at 1248 (holding that "copyright protection is not limited to the literal aspects of a computer program, but may extend beyond the programs' literal code to their structure, sequence, and organization") and Richard Raysman & Peter Brown, 'Lotus' Decision: Greater Protection for Computer Programs, N.Y. L.J., Aug. 14, 1990, at 3 (arguing that Lotus was a sound and proper progression in judicial interpretation of copyright protection for software).

FN49. Advances in areas in addition to the GUI, such as computer-aided software engineering and neural networks will make the analogy of a computer program as "a book to be read by a computer" increasingly less accurate. For example, using a computer-aided software development device, a computer may generate its own software with minimal human interaction. A computer program using neural network theory is "trained," that is, dynamically modified based upon the data input into the program, so that its state at any given time may be indeterminate.

FN50. See Stallman & Garfinkel, supra note 30, at 16. "Diversity is the primary goal when it comes to novels, songs, and the other traditional domains of copyright. Readers want to read novels they have not read. But diversity is not the goal of interface design. Computer users want consistency in interfaces because this promotes ease of use." Id.

FN51. See id.

FN52. See Twentieth Century-Fox Film Corp. v. MCA, Inc., 715 F.2d 1327 (9th Cir. 1983) (addressing the issue whether the two stories were substantially similar such that one would be considered an equivalent substitute for the other).

FN53. See supra note 50 and accompanying text.

FN54. 17 U.S.C. 106 (1988).

FN55. See supra notes 8-11 and accompanying text.

FN56. 101 U.S. 99, 102-06 (1879).

FN57. Pub. L. No. 94-553, 101, 90 Stat. 2541, 2544 (1976) (codified at 17 U.S.C. 102(b) (1988)). "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." Id.

FN58. 17 U.S.C. 102(a) (1988).

FN59. See, e.g., Whelan Assocs. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1234 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987).

FN60. H.R. REP. NO. 1476, 94th Cong., 2d Sess. 52 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5667.

FN61. 17 U.S.C. 107-112, 117 (1988). In particular, 117, "Limitations on exclusive rights: Computer programs," allows the owner of a computer program to make a copy of the program if it is for archival purposes or "as an essential step in the utilization of the computer program." Id. 117(1). For example, a typical computer user may want to make at least two copies: one copy on the hard disk of the computer system so that the program will be more accessible and run faster; a second copy on a diskette may be desired to protect against the loss or destruction of the original diskette containing the program.

FN62. Pub. L. No. 93-573, 201, 88 Stat. 1873, 1873 (1974).

FN63. Whelan, 797 F.2d at 1240.

FN64. CONTU FINAL REPORT, supra note 21, at 21.

FN65. In response to the views of CONTU that "flow charts" constitute copyrightable subject matter, at least one court has held that "the [CONTU] Commission intended copyright protection to extend beyond the literal code." Whelan, 797 F.2d at 1241. Another court has inferred that CONTU intended copyright protection to extend to the nonliteral aspects of computer software based on the personal views of the Vice-Chairperson of CONTU, Melville Nimmer, who testified about the Commission's intent to this extent. Lotus Dev. Corp. v. Paperback Software Int'l, 740 F. Supp. 37, 50-51 (D. Mass. 1990).

FN66. CONTU was dissolved after it delivered its Final Report to the President. Pub. L. No. 93-573, 208, 88 Stat. 1873, 1875 (1974).

FN67. See Whelan, 797 F.2d at 1241-42.

FN68. Pub. L. No. 96-517, 10, 94 Stat. 3020, 3028 (1980) (codified at 17 U.S.C. 101, 117 (1988)). The 1980 revisions added a definition for "computer program," id. 10(a), 94 Stat. at 3028 (codified at 17 U.S.C. 101 (1988)), and modified a computer program user's rights of adaptation, id. 10(b), 94 Stat. at 3028 (codified at 17 U.S.C. 117 (1988)).

FN69. The Whelan court pointed out that in response to the CONTU Report Congress amended only 101 and 117. Whelan, 797 F.2d at 1240-41. Even assuming that the CONTU Report accurately represented legislative intent, the Report would be relevant in construing only these two sections and no others. The issue of copyrightability of the nonliteral elements of computer software, however, is determined by judicial interpretation of 102(b), in which no changes were made as a result of the CONTU Report. "Therefore, it follows that the CONTU Report cannot be a substitute for legislative history in [cases deciding the copyrightability of the non-literal elements of computer software.]" Id. at 1241-42.

FN70. See, e.g., Micro-Sparc, Inc. v. Amtype Corp., 592 F. Supp. 33, 35 n.7 (D. Mass. 1984) ("The CONTU Report ... comprises the entire legislative history of 117.").

FN71. See Pamela Samuelson, How to Interpret the Lotus %iDecision (And How Not To), COMMUNICATIONS OF THE ACM, Nov. 1990, at 27, 32 ("I am a lawyer. I interpret cases for a living. I have read Judge Keeton's opinion [in Lotus Development Corp. v. Paperback Software International, 740 F. Supp. 37 (D. Mass. 1990),] carefully and I have worked very hard to figure out what it means. I would tell you if I could understand it, but I cannot. And neither can anyone else.").

FN72. 740 F. Supp. 37 (D. Mass. 1990).

FN73. Lotus Development Corporation is one of the largest software developers in the microcomputer software market. See Joseph Kelley, The Top 100 Revenue Earners in the Information Technology Industry, DATAMATION, June 15, 1991, at 10 (ranking Lotus as the 42d top revenue earner in the North American Information Technology Industry and the second largest microcomputer software supplier).

FN74. The Honorable Judge Robert E. Keeton is the Langdell Professor Emeritus of Harvard Law School and co-author of W. PAGE KEETON ET AL., PROSSER AND KEETON ON THE LAW OF TORTS (5th ed. 1984).

FN75. See News & Comment: Copyrights, Settlement, 40 Pat. Trademark & Copyright J. (BNA) 545 (1990) (noting that as part of a settlement subsequent to the court's opinion, Paperback agreed not to appeal the district court's ruling and to drop its counterclaim against Lotus).

FN76. Lotus, 740 F. Supp. at 69-70.

FN77. Id. at 68. The literal aspects of a computer program include the "source code," a list of pseudo-English language statements written by a human, and the "object code," a translation of the source code into a form understandable to the computer.

FN78. Id. at 46.

FN79. Id. at 45 (citations omitted).

FN80. Id. at 51-52.

FN81. Id.

FN82. Id. at 51 (quoting Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930) (L. Hand, J.), cert. denied, 282 U.S. 902 (1931)).

FN83. 45 F.2d 119 (2d Cir. 1930), cert. denied, 282 U.S. 902 (1931).

FN84. Lotus, 740 F. Supp. at 60-61 (quoting Nichols, 45 F.2d at 121).

FN85. Id. at 61.

FN86. Id.

FN87. Id. This part of the test is similar to the "not necessary" test set forth in Whelan Associates v. Jaslow Dental Laboratory, Inc., 797 F.2d 1222, 1248 (3d Cir. 1986) (holding that copyright protection extends to the "structure, sequence, and organization" of a dental billing computer program), cert. denied, 479 U.S. 1031 (1987). In that case, the Third Circuit set forth a test for distinguishing a protected expression from an unprotected idea:

[T]he purpose or function of a utilitarian work would be the work's idea, and everything that is not necessary to that purpose or function would be part of the expression of the idea.... Where there are various means of achieving the desired purpose, then the particular means chosen is not necessary to the purpose; hence, there is expression, not idea.

Id. (emphasis deleted) (citation omitted).

FN88. Lotus, 740 F. Supp. at 61.

FN89. The unpredictability in applying copyright protection to the nonliteral elements of a work was attested to by Judge Learned Hand, who described the test for copyright infringement as "necessarily vague" and who believed its application will "inevitably be ad hoc." Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir. 1960).

FN90. Patricia J. Pane, Look But ...: The Only Sure Conclusion of Lotus' Victory Is That Lawyers Will Be Partners in Development, INFOWORLD, July 23, 1990, at 43 (arguing that the unpredictability of copyright protection for computer software is detrimental both to consumers, and the advancement of software technology because software development companies are spending undue amounts of money on attorney's fees to determine and enforce their intellectual property rights).

FN91. Davis, supra note 48, at 21; see Stallman & Garfinkel, supra note 30, at 17 (noting that copyright law should encourage "small, localized changes" to the work of others because of the convenience of these changes to users).

The spirit of "Millions for defense, but not a cent for tribute" is little honored in business today. Customers and investors often avoid companies that are targets of suits; an eventual victory may come years too late for preventing great loss or even bankruptcy. Therefore, when offered a choice between paying royalties and being sued, most businesses pay, even if they would probably win.

Since the tendency is well known, companies often take advantage of it by filing or threatening suits they are unlikely to win. As long as any interface copyright exists, this form of extortion will broaden its effective scope.

Id.

FN92. See, e.g., Lotus, 740 F. Supp. at 65 ("[E]ven though programs like VisiCalc, 1-2-3, Multiplan, SuperCalc4, and Excel are very different in their structure, appearance, and method of operation, each is, at the most basic level, just a different way of expressing the same idea ....").

FN93. The difficulties in answering the question whether a particular element is necessary to every expression of the underlying idea is conversely analogous, albeit less important, to answering the question "Is there a God?" The "God question" truly can only be answered affirmatively by the Almighty descending from the heavens and, say, setting a bush ablaze; the "necessary question" only can be truly answered in the negative by the presence of a flesh-and-blood different expression of the same idea.

FN94. 17 U.S.C. 101 (1988).

FN95. Lotus, 740 F. Supp. at 52.

FN96. Id. at 54-55.

FN97. Id. at 58.

FN98. See Synercom Technology v. University Computing Co., 462 F. Supp. 1003 (N.D. Tex. 1978) (holding that the expression of a nonliteral sequence and order is inseparable from the idea and accordingly is not copyrightable), cited in Lotus, 740 F. Supp. at 55.

FN99. Lotus, 740 F. Supp. at 55. Judge Keeton's views notwithstanding, many sectors of the industry continue to assert that a computer user interface is inherently utilitarian and that providing copyright protection to a user interface is inappropriate. See, e.g., William M. Bulkeley, Borland Case Briefs Raise Questions About Software Copyright Protection, WALL ST. J., Oct. 4, 1991, at B2 (reporting that 10 prominent law professors filed an amicus brief in the pending Lotus Development Corp. v. Broderbund Software case, urging Judge Keeton that the Lotus test was overbroad in protecting the user interface of Lotus 1-2-3; and a user interface, because of its inherently utilitarian nature, would be more appropriately protected by the patent laws); Ronald Rosenberg, Lotus Investors Skittish over Lawsuit, New 1-2-3 Sales, BOSTON GLOBE, Oct. 4, 1991, at 70 (same).

FN100. See supra notes 62-71 and accompanying text.

FN101. Lotus, 740 F. Supp. at 55 (citing CONTU FINAL REPORT, supra note 21, at 29-30 (Hersey, Comm'r, dissenting)).

FN102. Id. at 57.

FN103. Id. at 58.

FN104. Id. at 77-79.

FN105. See supra note 32 and accompanying text.

FN106. See supra note 38 and accompanying text.

FN107. Lotus, 740 F. Supp. at 77.

FN108. Id. at 78-79.

FN109. See supra notes 9-11 and accompanying text.

FN110. Lotus, 740 F. Supp. at 59.

FN111. 17 U.S.C. 302(c) (1988).

FN112. U.S. CONST. art. I, 8, cl. 8.

FN113. Lotus, 740 F.Supp. at 77-78 ("Although [these principles] are important to the future of computer programming, [they were not] embraced by Congress ... in such a way as to override the public interest in conferring upon an author a right to a limited monopoly in the author's 'work."').

FN114. No. 90-20202, 1990 U.S. Dist. LEXIS 14305 (N.D. Cal. June 17, 1990).

FN115. Id. at *1.

FN116. Id. at *2.

FN117. Id. at *1.

FN118. Id. at *6.

FN119. Id. at *16. The court decided the case by construing the license not to convey the standard routines, and did not address the issue of merger. Id.

FN120. See supra notes 86-87 and accompanying text.

FN121. See, e.g., NEC Corp. v. Intel Corp., 10 U.S.P.Q.2d (BNA) 1177, 1184 (N.D. Cal. 1989) (finding no copyright infringement even though approximately 90 subroutines in the accused program were identical to the plaintiff's program because the copied subroutines were relatively short and involved simple, straightforward operations in which close similarity in approach by the programmer was not surprising).

FN122. See Stallman & Garfinkel, supra note 30, at 17 ("[T]here is usually no way to design an interface other than to base it on the ideas you have seen elsewhere. Only a great genius would be likely to envision a usable interface without a deep resemblance to current practice.").

FN123. See id. at 16 ("Significantly better interfaces may be hard to think of, but it is easy to invent interfaces which are merely different.... The result will be gratuitous incompatibility.").

FN124. See supra note 38 and accompanying text.

FN125. See supra notes 84-88 and accompanying text.

FN126. Whelan Assocs. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1236 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987). For a discussion of the Whelan test, see supra note 87.

FN127. See, e.g., Telemarketing Resources v. Symantec Corp., 12 U.S.P.Q.2d (BNA) 1991, 1994 (N.D. Cal. 1989) (stating that "[c]opyright protection is not 'afforded to elements of expression that necessarily follow from an idea' and are "'as a practical matter, indispensable or at least standard in the treatment of a given [idea],""' thereby effectively lowering the standard for "merger" (quoting Data E. USA, Inc. v. Epyx, Inc., 862 F.2d 204, 208 (9th Cir. 1988) (quoting Aliotti v. R. Dakin & Co., 831 F.2d 831, 901 (9th Cir. 1987))) (emphasis added)). But see Allen-Myland Inc. v. International Business Mach. Corp., 16 U.S.P.Q.2d (BNA) 1817, 1825 (E.D. Pa. 1990) (rejecting the lower standard of merger). In its opinion the Allen-Myland court noted that:

Whether it would be economically feasible for [the defendant] to write its own program ... is not relevant to the idea/expression distinction. Otherwise, a computer program so complex that vast expenditures of time and money would be required to develop a different program expressing the same idea would not be protected, even if innumerable different programs expressing that idea could be written, while a simpler program requiring less significant expenditures of time and money might be protected. So long as other expressions of the idea are possible, a particular expression of the idea can enjoy copyright protection, regardless of whether a copying party possesses the resources to write a different expression of the idea.

Allen-Myland, 16 U.S.P.Q.2d (BNA) at 1825 (footnote omitted).

FN128. See Chandler, supra note 44, at 253-55 (advocating the use of utility patents for protection of computer software); John P. Sumner, The Copyright/Patent Interface: Patent Protection for the Structure of Program Code, 30 JURIMETRICS J. 107 (1989) (arguing that the protection needed for computer software is more analogous to the protection provided by utility patents than to that provided by copyrights).

FN129. 35 U.S.C. 154 (1988).

FN130. 17 U.S.C. 102(b) (1988).

FN131. 35 U.S.C. 1-376 (1988).

FN132. See Chandler, supra note 44, at 253.

FN133. 409 U.S. 63 (1972) (involving a process for converting binary-coded decimal numerals into pure binary numbers).

FN134. Id. at 67.

FN135. 450 U.S. 175 (1981).

FN136. Id. at 192.

FN137. Chandler, supra note 44, at 253 ("A major objection is probably that accepting program patent applications might impose a severe burden on the Office's operations.... Additionally, the Patent Office lacks both an examination procedure and a file or system of classification of prior art from which to search and investigate new applications.").

FN138. See Richard Conway & Michael Magazine, A Case Against Software Patents, OR/MS TODAY, Feb. 1991, at 14, 14 (describing U.S. Patent 4,937,743, granted to Dr. William Rassman, which covers a "method and system for scheduling, monitoring and dynamically managing resources").

FN139. Id. at 15.

FN140. See 35 U.S.C. 102(a) (1988) ("A person shall be entitled to a patent unless ... the invention was known or used by others in this country ...."); id. 112 ("The specification shall contain a written description of the invention ... in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains ... to make and use the same ....").

FN141. Jack E. Brown, Recent International Trends in the Legal Protection of Computer Software, 2 J.L. & TECH. 167, 170 (1987) (footnotes omitted).

FN142. Daniel J. Kluth & Steven W. Lundberg, Design Patents: A New Form of Intellectual Property Protection for Computer Software, 70 J. PAT. & TRADEMARK OFF. SOC'Y 847, 854-58 (1988) (arguing that design patents may provide "a broader and more potent form of protection" for computers than copyright law).

FN143. 35 U.S.C. 171 (1988) ("Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor ...." (emphasis added)).

FN144. Id. 101 ("Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter ... may obtain a patent therefor ...." (emphasis added)).

FN145. Barofsky v. General Elec. Corp., 396 F.2d 340, 343 (9th Cir. 1968), cert. denied, 393 U.S. 1031 (1969); A & H Mfg. Co. v. Contempo Card Co., 576 F. Supp. 894, 898 (D.R.I. 1983) ("More than a century ago, the Supreme Court explained that it is the appearance of an article which is protected by and crucial to a design patent.... To be patentable, a design must be primarily ornamental; designs dictated by functional considerations are not primarily ornamental and, therefore, are not patentable." (citations omitted)).

FN146. In re Zahn, 617 F.2d 261, 267 (C.C.P.A. 1980).

FN147. Gorham Co. v. White, 81 U.S. 511, 528 (1872); Unette Corp. v. Unit Pack Co., 785 F.2d 1026, 1029 (Fed. Cir. 1986).

FN148. See supra note 39.

FN149. See supra notes 54-127 and accompanying text.

FN150. Morton D. Goldberg & John F. Burleigh, Copyright Protection for Computer Programs: Is the Sky Falling?, 17 AIPLA Q.J. 294, 317-19 (1989).

FN151. Lotus Dev. Corp. v. Paperback Software Int'l, 740 F. Supp. 37 (D. Mass. 1990).

FN152. Raysman & Brown, supra note 48, at 3.

FN153. In the broadest sense, "look and feel" refers to all the nonliteral aspects of a computer program, including the "structure, sequence, and organization" of the written code. Whelan Assocs. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1249 (3d Cir. 1986), cert. denied, 479 U.S. 1031 (1987); Lotus, 740 F. Supp. at 62. Used more narrowly, "look and feel" refers to the unique characteristics of a computer program user interface, including the audiovisual effects and methods of input and output. Johnson Controls, Inc. v. Phoenix Control Sys., 886 F.2d 1173, 1175 n.3 (9th Cir. 1989).

FN154. See, e.g., Telemarketing Resources v. Symantec Corp., 12 U.S.P.Q.2d (BNA) 1991, 1996 (N.D. Cal. 1989) ("Copyright protection applies to the user interface, or overall structure and organization of a computer program, including its audiovisual displays, or screen 'look and feel."').

FN155. Raysman & Brown, supra note 48, at 3. Although "look and feel" was intended to broaden the scope of copyright protection for computer software, it proved too nebulous for consistent application. In rejecting "look and feel" as a basis for software copyright infringement, Judge Keeton adopted the "essential" test for protecting nonliteral elements which, in the opinion of Raysman and Brown, provides even greater protection than the "look and feel" doctrine. For a description of the "essential" test used in Lotus, see supra text accompanying notes 83-93.

FN156. Davis, supra note 48, at 21.

FN157. See supra notes 83-88 and accompanying text.

FN158. Baker v. Selden, 101 U.S. 99, 102-06 (1879).

FN159. 17 U.S.C. 102(b) (1988) ("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.").

FN160. OTA BACKGROUND PAPER, supra note 15, at 2.

FN161. Davis, supra note 48, at 21.

FN162. Pane, supra note 90, at 46.

FN163. Lotus Dev. Corp. v. Paperback Software Int'l, 740 F. Supp. 37, 60-61 (D. Mass. 1990); see supra notes 83-88 and accompanying text.

FN164. Pane, supra note 90, at 43.

FN165. 35 U.S.C. 1 (1988).

FN166. Federal Courts Improvement Act, Pub. L. No. 97-164, 127(a), 96 Stat. 25, 37 (1982) (codified as amended at 28 U.S.C. 1295 (1988)).

FN167. 35 U.S.C. 282 (1988). A patent issued by the PTO will be presumed legally valid, unless proven otherwise by "clear and convincing" evidence. See, e.g., Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 719 (Fed. Cir. 1991).

FN168. 28 U.S.C. 1295(a) (1988).

FN169. See Chemical Eng'g Corp. v. Marlo, Inc., 754 F.2d 331, 333 (Fed. Cir. 1984) (noting that the court was "charged with the duty of increasing doctrinal stability in the field of patent law") (citing S. REP. NO. 275, 97th Cong., 2d Sess. 2-7 (1981), reprinted in 1982 U.S.C.C.A.N. 11, 12-17); see also Rochelle C. Dreyfuss, The Federal Circuit: A Case Study in Specialized Courts, 64 N.Y.U. L. REV. 1, 21 (1989) (noting that "the conceptual strands of patent law have been integrated into a coherent whole").

FN170. As Justice Louis Brandeis stated in arguing against the judicial creation of a tort of "misappropriation":

The unwritten law possesses capacity for growth; and has often satisfied new demands for justice by invoking analogies or by expanding a rule or principle. This process has been in the main wisely applied and should not be disturbed. Where the problem is relatively simple, as it is apt to be when private interests only are involved, it generally proves adequate. But with the increasing complexity of society, the public interest tends to become omnipresent; and the problems presented by new demands for justice cease to be simple. Then the creation or recognition by courts of a new private right may work serious injury to the general public, unless the boundaries of the right are definitely established and wisely guarded. In order to reconcile the new private right with the public interest, it may be necessary to prescribe limitations and rules for its enjoyment; and also to provide administrative machinery for enforcing the rules. It is largely for this reason that, in the effort to meet the many new demands for justice incident to a rapidly changing civilization, resort to legislation has latterly been had with increasing frequency.

....

Courts are ill-equipped to make the investigations which should precede a determination of the limitations which should be set upon any property right .... Courts would be powerless to prescribe the detailed regulations essential to full enjoyment of the rights conferred or to introduce the machinery required for enforcement of such regulations. Considerations such as these should lead us to decline to establish a new rule of law in the effort to redress a newly-disclosed wrong, although the propriety of some remedy appears to be clear." International News Serv. v. Associated Press, 248 U.S. 215, 262, 267 (1918) (Brandeis, J., dissenting).

FN171. 17 U.S.C. 102(b) (1988).

FN172. For example, by extending protection to several nonliteral elements of the user interface in issue, many observers feel the Lotus court exceeded statutory authority. See supra note 99.

FN173. OTA BACKGROUND PAPER, supra note 15, at 2.

FN174. See Lotus Dev. Corp. v. Paperback Software Int'l, 740 F. Supp. 37, 52 (D. Mass. 1990); see supra notes 56-57 and accompanying text.

FN175. Baker v. Selden, 101 U.S. 99, 102-06 (1879).

FN176. Pub. L. No. 94-553, 101, 90 Stat. 2541, 2544 (1976) (codified at 17 U.S.C. 102(b) (1988)).

FN177. See supra notes 165-69 and accompanying text.

FN178. See supra notes 165-67 and accompanying text.

FN179. S. 198, 101st Cong., 2d Sess. (1990).

FN180. See Roger Cohen, Software Issue Kills Liberal Amendment to Copyright Laws, N.Y. TIMES, Oct.13, 1990, at A11.

FN181. See House Passes Bill on Software, Architecture, and Artists' Rights, 40 Pat. Trademark & Copyright J. (BNA) 481 (1990).

FN182. See id.

FN183. See Cohen, supra note 180, at A11.

FN184. Section 117 is an example of a specific and anomalous computer software exception to the copyright law. This section allows copying of computer software if it is either "an essential step in the utilization of the computer program," or "for archival purposes." 17 U.S.C. 117 (1988).

FN185. Stern, supra note 5, at 1236 n.46.

FN186. Id. at 1261.

FN187. 17 U.S.C. 901-914 (1988).

FN188. See generally MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT 18 (1989) (describing and detailing the sui generis nature of the Act).

FN189. In patent law parlance, this "existing body of knowledge" is referred to as the "prior art."

FN190. See 37 C.F.R. 202.20(c)(vii) (1991).

FN191. See Stern, supra note 5, at 1236 n.46 (noting that copyright protection attaches without any prior expert examination).

FN192. 37 C.F.R. 202.20(c)(vii) (1991).

FN193. Id. The Copyright Office regulations require only that the first and last 25 pages of the source code be deposited. Id. 202.20(c)(vii)(A).

FN194. See Samuelson, supra note 7, at 513-14.

FN195. See Pamela Samuelson, CONTU Revisited: The Case Against Copyright Protection for Computer Programs in Machine-Readable Form, 1984 DUKE L.J. 663, 711-13 (arguing that the quid pro quo of copyright protection in exchange for public disclosure is a constitutionally mandated prerequisite). But see Barry J. Swanson, The Role of Disclosure in Modern Copyright Law, 70 J. PAT. & TRADEMARK OFF. SOC'Y 217, 226 (1988) (arguing that the lack of a disclosure requirement reflects the evolution of copyright law toward economic protectionism: "Protection with mandatory disclosure would not only subvert the goal of economic protectionism, but would also most likely inhibit the flow of new [computer] programs to the general public").

FN196. See supra note 160 and accompanying text.

FN197. See 35 U.S.C. 112 (1988) (stating that the applicant must submit "claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention").

FN198. See Richards & Reid, supra note 19, at A1.

FN199. The developer receives the quid of a limited monopoly in exchange for the quo of complete public disclosure. See supra text accompanying note 7.

FN200. The term refers to the relative ease and inexpense of copying a software product as compared with the great expense and effort in originally creating the same. See supra note 22 and accompanying text.

FN201. See 15 U.S.C. 1125(a) (1988).

FN202. 35 U.S.C. 112 (1988); see also Mendenhall v. Astec Indus., 14 U.S.P.Q.2d (BNA) 1134 (E.D. Tenn. 1988) (holding that a patent application for a computer program fulfilled the enablement requirement even though a source program was not disclosed), aff'd, 14 U.S.P.Q.2d (BNA) 1140 (Fed. Cir. 1989).

FN203. 17 U.S.C. 302-305 (1988) (allowing 75 years for a corporate author or 50 years beyond the life of the author for an individual author).

FN204. 35 U.S.C. 154 (1988) (term of utility patent is 17 years); id. 173 (term of design patent is 14 years).

FN205. 1 J. THOMAS MCCARTHY, TRADEMARK AND UNFAIR COMPETITION 6.3 (2d ed. 1984) (term of trademark is perpetual as long as it is being used).

FN206. Peter S. Menell, Tailoring Legal Protection for Computer Software, 39 STAN. L. REV. 1329, 1368 n.206 (1987).

FN207. 35 U.S.C. 101 (1988).

FN208. Id. 103. Nonobvious means that "the subject matter as a whole would [not] have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." Id.

FN209. Contra Stern, supra note 5, at 1263 (arguing that novelty determinations should not be made until an infringement suit arises due to the excessive delay inherent in making such a determination).

FN210. 35 U.S.C. 103 (1988).

FN211. COMMISSIONER OF PATENTS AND TRADEMARKS, ANNUAL REPORT FISCAL YEAR '88, at 20 (1989).

FN212. A "license" in the patent law context may be defined as a covenant not to sue for infringement in exchange for a royalty. In the context of the proposed sui generis plan, a license would constitute an agreement between the parties in question to settle the issues of degree of copying and amount of royalties without the inconvenience and expense of involving the newly-created software agency.

FN213. Kaz Mfg. Co. v. Chesebrough-Ponds, Inc., 317 F.2d 679, 681 (2d Cir. 1963).

FN214. 17 U.S.C. 107 (1988).

FN215. Lotus Dev. Corp. v. Paperback Software Int'l, 740 F. Supp. 37, 69-70 (D. Mass. 1990).

FN216. See supra notes 37-39 and accompanying text.

FN217. Whelan Assocs. v. Jaslow Dental Lab., Inc., 797 F.2d 1222, 1231-32 (3d Cir. 1986), cert denied, 479 U.S. 1031 (1987).

FN218. See Chandler, supra note 44, at 201-13. Specifically, 43(a) of the Trademark (Lanham) Act of 1946, 15 U.S.C. 1125(a) (1988), forbidding "false designations of origin and false descriptions" of goods, and 34(d), id. 1116(d), forbidding "counterfeit marks," likely would encompass the activities of most software pirates.

FN219. Clearly, factors beyond the scope of this Note must be considered when formulating a new program of computer software protection. In light of the expected world harmonization of intellectual property rights, the foremost among these factors are the international effects on, and need for acceptance by, other countries. See, e.g., Committee of Experts Considers Harmonization of Copyright Laws, 3 WORLD INTELL. PROP. REP. (BNA) 86 (1989).