gnu@hoptoad.uucp (John Gilmore) (07/31/89)
Full text of the order. Typos are mine. -- gnu
FILED
JUL 25 1989
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
APPLE COMPUTER, INC., )
)
Plaintiff, ) No. C-88-20149-WWS
)
vs. ) MEMORANDUM OF DECISION
) AND ORDER
MICROSOFT CORPORATION and )
HEWLETT-PACKARD COMPANY, )
)
Defendents. )
________________________________)
Apple Computer, Inc. ("Apple") has brought this copyright
infringement action against Microsoft Corporation ("Microsoft")
and Hewlett-Packard Company ("HP"), alleging that the visual
displays in Microsoft's software product Windows 2.03 and HP's
product NewWave infringe Apple's copyrighted graphic user
interface.
Microsoft and HP previously moved for summary judgement under
the Agreement between Apple and Microsoft dated November 22,
1985 ("Agreement"). In its prior ruling, the Court held that
the Agreement is not a complete defense to Apple's infringement
claims with respect to Windows 2.03. It also held that the
Agreement licenses Microsoft "to use the visual displays in
Windows 1.0 and the named applications programs in current and
future software products." _Apple Computer, Inc. v. Microsoft
Corp._, 709 F. Supp 925, 931-32 (N.D. Cal. 1989).
In its motion Microsoft also sought an adjudication that the
license covers a set of discrete visual displays and that the
visual displays in Windows 2.03 are within this set. (Microsoft
Memo. filed 2/13/89 at 3.) The Court rejected that claim
insofar as it was based solely on the interpretation of the
Agreement. Following issuance of the prior ruling, however, the
parties submitted videotapes and other materials directed at a
comparison of the visual displays in Windows 1.0 and those in
Windows 2.03. HP also moved for partial summary judgement that
the license covers discrete visual displays. After further
briefing and argument, following distribution to counsel of a
prior draft of this memorandum, the Court now makes its rulings
on Microsoft's requested adjudication and HP's motion. (1)
____
(1) At oral argument, counsel for Apple contended _for the
first time_ that the 1985 Agreement was ambiguous and therefore
raised a triable issue of fact, citing this Court's article,
_Summary Judgement Under the Federal Rules: Defining Genuine
Issues of Material Fact_, 99 F.R.D. 465 (1984). The full passage
from which counsel selectively quoted disposes of this argument:
The interpretation of a written instrument is
likewise sometimes an issue of fact and sometimes an
issue of law for Rule 56 purposes. While interpreting a
writing which the court finds to be unambiguous is
clearly a question of law, an issue of fact may be
raised by a dispute over the intention of the parties to
an unambiguous writing.
99 F.R.D. at 474 (footnotes omitted). Here there is no dispute
over historical facts. The self-serving deposition testimony of
Apple's witnesses over what they intended by entering the 1985
Agreement does not create an issue of fact; if it did, any party
to an agreement could force a trial simply by testifying to a
contrary intention. There is no contemporary evidence of the
intended meaning of the words "visual displays"; much less
is there such evidence of a dispute over their meaning. What the
contemporary evidence shows, as discussed in the court's prior
ruling, is that the text proposed by Apple during the
negotiations, which would have given it the protection that it
now seeks, i.e. the "no more like the Macintosh" limitation, was
rejected by Microsoft and different language was agreed on. _See_
709 F. Supp. at 927. The question whether Apple can now impose
that limitation on the Agreement is a legal question of
interpretation properly decided on summary judgement.
____
The question now before the Court is whether the Agreement,
although not a complete defense, is a partial defense against
the infringement claim and, if so, to what extent it licenses
the visual displays in Windows 2.03 and NewWave.
I.
Apple contends that the 1985 agreement was only "a license
of the interface of Windows Version 1.0 as a whole, not a
license of broken out 'elements' which Microsoft could use to
create a different interface more similarTo: gnu
cc:
Subject: Apple/uSoft Court's "Memorandum of Decision and Order"
--------
FILED
JUL 25 1989
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
APPLE COMPUTER, INC., )
)
Plaintiff, ) No. C-88-20149-WWS
)
vs. ) MEMORANDUM OF DECISION
) AND ORDER
MICROSOFT CORPORATION and )
HEWLETT-PACKARD COMPANY, )
)
Defendents )
________________________________)
Apple Computer, Inc. ("Apple") has brought this copyright
infringement action against Microsoft Corporation ("Microsoft")
and Hewlett-Packard Company ("HP"), alleging that the visual
displays in Microsoft's software product Windows 2.03 and HP's
product NewWave infringe Apple's copyrighted graphic user
interface.
Microsoft and HP previously moved for summary judgement under
the Agreement between Apple and Microsoft dated November 22,
1985 ("Agreement"). In its prior ruling, the Court held that
the Agreement is not a complete defense to Apple's infringement
claims with respect to Windows 2.03. It also held that the
Agreement licenses Microsoft "to use the visual displays in
Windows 1.0 and the named applications programs in current and
future software products." _Apple Computer, Inc. v. Microsoft
Corp._, 709 F. Supp 925, 931-32 (N.D. Cal. 1989).
In its motion Microsoft also sought an adjudication that the
license covers a set of discrete visual displays and that the
visual displays in Windows 2.03 are within this set. (Microsoft
Memo. filed 2/13/89 at 3.) The Court rejected that claim
insofar as it was based solely on the interpretation of the
Agreement. Following issuance of the prior ruling, however, the
parties submitted videotapes and other materials directed at a
comparison of the visual displays in Windows 1.0 and those in
Windows 2.03. HP also moved for partial summary judgement that
the license covers discrete visual displays. After further
briefing and argument, following distribution to counsel of a
prior draft of this memorandum, the Court now makes its rulings
on Microsoft's requested adjudication and HP's motion. (1)
____
(1) At oral argument, counsel for Apple contended _for the
first time_ that the 1985 Agreement was ambiguous and therefore
raised a triable issue of fact, citing this Court's article,
_Summary Judgement Under the Federal Rules: Defining Genuine
Issues of Material Fact_, 99 F.R.D. 465 (1984). The full passage
from which counsel selectively quoted disposes of this argument:
The interpretation of a written instrument is
likewise sometimes an issue of fact and sometimes an
issue of law for Rule 56 purposes. While interpreting a
writing which the court finds to be unambiguous is
clearly a question of law, an issue of fact may be
raised by a dispute over the intention of the parties to
an unambiguous writing.
99 F.R.D. at 474 (footnotes omitted). Here there is no dispute
over historical facts. The self-serving deposition testimony of
Apple's witnesses over what they intended by entering the 1985
Agreement does not create an issue of fact; if it did, any party
to an agreement could force a trial simply by testifying to a
contrary intention. There is no contemporary evidence of the
intended meaning of the words "visual displays"; much less
is there such evidence of a dispute over their meaning. What the
contemporary evidence shows, as discussed in the court's prior
ruling, is that the text proposed by Apple during the
negotiations, which would have given it the protection that it
now seeks, i.e. the "no more like the Macintosh" limitation, was
rejected by Microsoft and different language was agreed on. _See_
709 F. Supp. at 927. The question whether Apple can now impose
that limitation on the Agreement is a legal question of
interpretation properly decided on summary judgement.
____
The question now before the Court is whether the Agreement,
although not a complete defense, is a partial defense against
the infringement claim and, if so, to what extent it licenses
the visual displays in Windows 2.03 and NewWave.
I.
Apple contends that the 1985 agreement was only "a license
of the interface of Windows Version 1.0 as a whole, not a
license of broken out 'elements' which Microsoft could use to
create a different interface more similar to that of the
Macintosh." (Apple Memo. 7.) Microsoft and HP contend that the
license applies to discrete visual displays in Windows 1.0
individually and, therefore, that Windows 2.03 and NewWave are
covered by the license to the extent that they include visual
displays found in Windows 1.0.
The language of the 1985 Agreement does not support Apple's
restrictive interpretation. The Agreement identifies its
subject matter as "_certain visual displays_ generated by . . .
'Microsoft Windows Version 1.0'" and five named applications
programs. (Microsoft Memo., Ex. A, Agreement, Preamble
(emphasis added).) Microsoft acknowledged that these "_visual
displays . . . are derivative works_ of the visual displays
generated by Apple's Lisa and Macintosh graphic user interface
programs." (_Id_., Para. 1 (emphasis added).)
Apple granted Microsoft a non-exclusive "license to use
_these derivative works_ in present and future software
programs and to license them to . . . third parties." (_Id_., Para. 2
(emphasis added).) Microsoft, in turn, granted Apple a non-
exclusive license "to use any new visual displays created by
Microsoft . . . as part of its Microsoft Windows retail software
product." (_Id_., Para. 5.)
The Agreement makes clear that the parties did not consider
an interface and the visual displays generated by that interface
to be synonymous, and that they chose the words of the license
deliberately. The word "interface" is used in paragraph one in
the context of Microsoft's acknowledgement that the licensed
"visual displays . . . are derivative works of the visual
displays generated by Apple's Lisa and Macintosh graphic user
interface programs." The juxtaposition in that sentence shows
that the terms "visual displays" and "interface," as used in the
Agreement, were not regarded by the parties as interchangeable.
Had it been the parties' intent to limit the license to the
Windows 1.0 interface, they would have known how to say so.
Instead, the "derivative works" covered by the license are
identified as the "visual displays" in the Windows 1.0
interface, not the interface itself. And there is nothing in
the 1985 Agreement that indicates that it was intended as a
product license restricting Microsoft and its licensees to the
use of the Windows 1.0 interface as a whole.
Apple contends that, notwithstanding the absence of any
language in the Agreement to this effect, its negotiators
understood that the license did not allow Microsoft to develop a
new interface more similar to the Macintosh interface. The
history of the negotiations, however, shows that Apple tried but
did not succeed in obtaining Microsoft's agreement to a
limitation of the license to Windows 1.0 taken as a whole,
protecting against the development of interfaces more like the
Macintosh look and feel. 709 F. Supp. at 927. Instead the
parties executed a license to use specified visual displays.
To avoid the plain meaning of the Agreement, Apple seeks to
impose a tortured interpretation on the words "visual display,"
namely that they serve only to "distinguish the computer code of
Windows Version 1.0 from the audiovisual works which the code
produced." (Apple Memo. 9.) Apple bases this argument on the
fact that the Agreement does not anywhere refer to "individual
visual display elements." (_Id_.) The failure of the Agreement
to refer to "individual visual display _elements_", however, does
not mean that, contrary to the plain meaning of the language of
the Agreement, the license is not to use discrete visual
displays. (2)
____
(2) Apple also contends that the use of the words "visual
displays" in the license does "not . . . warrant conversion of
the Agreement into a license (whole or partial) for all future
products created by Microsoft . . . that arguably could trace
some similarity to Windows Version 1.0." (Apple Memo. 9.)
Apple is correct: "visual displays" means what it says, no more
and no less; the use of these words in the license does not
allow Microsoft to develop future versions of Windows as it
pleases," _see_ 709. F. Supp. at 929, and neither does this ruling.
____
That the license of visual displays from Apple to Microsoft
must mean what it says is also confirmed by the use of the same
language in the license from Microsoft to Apple "to use any new
visual displays created by Microsoft . . . in [Apple's] software
programs." (Microsoft Memo., Ex. A, Agreement Para. 5.) This
license clearly gives Apple the right to use individual visual
displays created by Microsoft; Apple is not limited to
incorporating the entire interface into its software programs if
it wishes to use any new visual display created by Microsoft.
This understanding of the effect of the license from Microsoft
was shared by Apple's chief negotiator, Eisenstat, who testified
that the license allowed Apple to incorporate into its Macintosh
interface any "new visual feature" developed by Microsoft for
Windows. (Microsoft Memo. 7.)
Furthermore, as pointed out by Microsoft and HP, Apple's
current interpretation would render the parties' sublicensing
rights worthless. Both Apple and Microsoft rely heavily on
third party programmers to develop applications programs to run
under their respective operating environments, thus enhancing
the value of the operating environments. Applications programs
incorporate a mixture of visual features from the operating
environment and new features added by the applications
programmers. This necessarily changes the visual displays seen
by the user. (3) Under Apple's contention that the licenses extend
to the interface as a whole and do not allow deviation from that
interface, such selective use of visual features from the
operating environment and creation of different visual displays
would violate the licenses. An interpretation that leads to
such a result is unreasonable. (4)
____
(3) As HP points out, if the visual displays were not
affected by an applications program, the user could not tell
that the program was running, control the program, put
information into it, or take information out of it. (HP Memo.
5-6.)
(4) In its comments on the Court's proposed memorandum Apple
retreats from this position, stating that deviations from the
Windows 1.0 interface would be permissible so long as they did
not make "the appearance more similar to Apple's audiovisual
works than was Windows Version 1.0." (Written Comments 6.) Of
course, such language was expressly rejected by Microsoft and is
not found in the Agreement. Moreover, its effect would be to
give Apple a virtual veto power over all new software products
excercisable according to wholly subjective criteria.
____
Thus, as stated in the Court's prior ruling, the language
of the license "allow[s] Microsoft . . . to use the licensed
visual displays in future versions of Windows and in different
applications programs, whether then in existence or not." 709
F. Supp. at 929.
Contrary to Apple's suggestion, there is nothing in the
copyright law that precludes the grant of such a license to use
visual displays and to incorporate them into a new work that
also includes new visual displays. A copyright license is a
contract like any other contract and the starting point of the
analysis must necessarily be the terms of the license. _See
Cohen v. Paramount Pictures Corp._, 845 F.2d 851, 853 (9th Cir.
1988); _see also_ 3 M. Nimmer & D. Nimmer, _Nimmer on Copyright_
Sec. 10.08 (1988). As stated above, the terms of the 1985 license
are clear and unambiguous.
Apple also cites the rule that a licensee infringes the
copyright if he significantly alters the licensed work. This
rule has no application here because Microsoft is not accused of
altering a licensed work; the use of visual displays was
licensed, not use of Windows 1.0 as a whole. Moreover, each of
the cases on which Apple relies for this proposition involved
action by a copyright licensee beyond the scope of the license.
_See, e.g._, _Frank Music Corp. v. Metro-Goldwyn Mayer, Inc._, 772
F.2d 505, 511-12 (9th Cir. 1985) (performance of musical
composition accompanied by visual representations of dramatic
work from which music came violated license expressly limited to
performing music); _Gilliam v. American Broadcasting Co._, 538
F.2d 14, 20-21 (2d Cir. 1976) (licensee's unilateral editing of
television programs violated express provision of license
requiring author's consent for changes). In this case, the
license specifically authorized the use of "visual displays
generated by [Windows 1.0]" "in present and future software
products." (Microsoft Memo., Ex. A, Agreement, Preamble & Para. 2.)
Thus the use of selected visual displays in other programs must
necessarily have been intended -- if it was not, Microsoft would
be exposed to a possible infringement claim whenever it used
anything less than the entire Windows 1.0 interface. Such a
result cannot be squared with the plain language of the
Agreement.
It is, of course, true, as Apple argues, that in
determining whether an audiovisual work infringes, the work must
be viewed as a whole. But where a work includes licensed
features as well as unlicensed features, infringement depends on
whether the unlicensed features are entitled to protection;
licensed features are treated as being in the public domain.
_Cf._ _Data East USA, Inc. v. Epyx, Inc._, 862 F.2d 204, 208 (9th
Cir. 1988) (substantial similarity of unprotected expression
does not support finding of infringement).
In its prior ruling the Court concluded that overlapping
windows, as featured in Windows 2.03, are a visual display
within the meaning of the 1985 Agreement and are not within the
scope of the license. 709 F. Supp. at 929. But overlapping
windows, obviously, are not the only visual display in Windows
2.03. And equally obviously, because Windows 1.0 did not have
overlapping windows, it must have had other visual displays or
else the license would have been an empty gesture. It must be
concluded therefore that the Agreement licenses the use of the
visual displays in Windows 1.0 and to that extent provides a
partial defense to infringement claims based on the use of such
visual displays.
II.
The question before the Court, therefore, is which visual
displays in Windows 2.03 and NewWave are visual displays
licensed under the 1985 Agreement. (5)
____
(5) The Court does not address the questions of whether
Apple's copyright is valid or, if so, whether any unlicensed
visual displays are substantially similar to any of Apple's
copyrighted material.
____
The Agreement does not specifically define the term "visual
display" and, on the record of these motions, there is no basis
for attributing to it a specific, technical meaning. The term
should therefore be given a reasonable interpretation,
consistent with its facial meaning and the purpose of the
license to protect Microsoft against infringement claims for
using visual displays covered by the Agreement. A visual
display necessarily is what the user sees on the screen. In the
context of the Agreement it consists of or includes those
features to which one would look to assess similarity for
purposes of determining whether the copyright has been
infringed. _See_ _Data East_, 862 F.2d at 208.
This interpretation is consistent with Apple's prior usage.
In its previous summary judgement memorandum, Apple referred to a
photograph of a screen display from Windows 2.03 containing
three overlapping windows. (Apple Memo. filed 1/27/89 at 17,
referring to Apple Appendix filed 1/27/89, Ex. 47.) Apple
referred to "all of the visual displays that appear" in this
photograph, and then proceeded to list the following: "the
window border, the window frame, the menu box outline, the
dialog box outline, the scroll bars, check boxes and buttons."
(_Id_.)
Apple has submitted a list of 189 "similarities in
particular features" between its copyrighted audio visual works
and Windows 2.03 and NewWave. (6) (Apple Pretrial Stmt., Ex. A.)
Microsoft claims that 178 of the 189 identified features are
also features of Windows 1.0 and has submitted a video tape in
support of its claim. (Trower Dec. filed 6/9/89, Ex. B
(videotape) and Ex. 2 (list of features).) Apple has also
submitted a list of 39 differences between the features of
Windows 1.0 and those of Windows 2.03, and a videotape
demonstrating some of these differences; it does not contend,
however, that all of these new features infringe its
copyrights. (7) (Exs. A and B to Apple's Memo.) Microsoft
contends that twenty-nine of these differences are not included
in Apple's list of similarities between Windows 2.03 and the
Macintosh user interface, six relate to the change from tiled
to overlapping main application windows, two relate to the changes
in the use of icons, and the other two are trivial. (Microsoft
Response Memo. 22.)
____
(6) Apple has identified an additional fifty visual features
found only in NewWave that it contends are substantially similar
to visual features in the Macintosh user interface.
(7) In fact, some of the items in this list are not found in
the Macintosh graphic user interface.
____
The Court has reviewed all of the papers and related
videotapes submitted by the parties, as well as the exhibits
submitted in this and the previous phase of these summary
judgement motions.
This review discloses that both Windows 1.0 and Windows
2.03 have many visual displays that are also found in the
Macintosh user interface. It also discloses, however, that most
visual displays in Windows 2.03 are also in Windows 1.0 and,
therefore, are covered by the 1985 license.
The features identified by Apple as potentially infringing
fall into six categories: (1) design and appearance of
individual main application windows (Apple Pretrial Stmt., Ex A,
A-2 through A-7, A-9, C, E); (2) design and appearance of dialog
boxes (_id_., J-O); (3) menu design and appearance (_id_., F);
(4) design and appearance of individual applications programs
included with Windows 1.0 and 2.03 (_id_., P-W); (5) icon design,
appearance and manipulation (_id_., G); and (6) arrangement and
manipulation of multiple main application windows (_id_., A-1,
A-8, B, D). The features in the first four and most of the
fifth of these groups are, except for insignificant differences,
the same in the two versions of Windows. (8)
____
(8) All features found in groups H and I and some features in
groups F, G, and J are found in NewWave only; HP does not
contend that they are covered by the license. They are
therefore not affected by this ruling.
____
1. _Appearance of individual main application windows_. The
design and appearance of individual main application windows is
essentially unchanged from Windows 1.0 to Windows 2.03. Under
both versions of Windows, individual main application windows
are bordered rectangles (9) with title bars at the top, scroll bars
on the bottom and right edges, elevator boxes on the scroll
bars, a close-box at the left end of the title bar, (10) and a
sizing box at the bottom right corner of the window. Scrolling
is identical between the two versions. Window sizing is
essentially the same: under both versions, a window may be
resized by dragging the mouse from the lower right corner of the
window and a grey outline of the window follows the mouse.
Although the default colors of the various components of the
windows are different between the two versions, this is not a
significant change. Where Windows 1.0 has a sizing box as the
right end of the title bar, Windows 2.03 has two zoom arrows;
however, the Macintosh has neither of these features.
____
(9) Windows 2.03 added a filled border running completely
around each window. This feature is not found in Macintosh
windows.
(10) The appearance of the close-box was changed slightly.
____
2. _Dialog boxes_. Both versions of Windows use dialog
boxes that may overlap the main application windows and that
contain checkboxes, radio buttons, and rectangular buttons. The
appearance of these items is essentially the same between the
two versions. Microsoft changed the label of a standard button
that appears in all dialog boxes from "Ok" to "OK"; although the
Macintosh also uses "OK," this change is not significant. Minor
changes were made in the underlining of button labels, but this
feature is not found in the Macintosh graphic user interface.
3. _Menus_. Menu design and appearance is essentially the
same in both versions of Windows. A horizontal bar, called the
menu bar, extends across the top of each main application
window. This bar contains a left-justified list of menu names.
When a menu name is selected with the mouse, a pull down menu
appears below the menu name. The pull down menu contains a
vertical list of menu items which can be selected with the
mouse. Windows 2.03 indicates keyboard accelerators, which
allow the user to choose a menu item from the keyboard without
using the mouse, by underlining; Windows 1.0 does not have this
feature, but neither does the Macintosh.
4. _Applications programs_. Both versions of Windows come
with a package of applications programs including a text editor,
paint program, file management program, database management
program, clipboard, clock, and calculator. All of these
programs are essentially the same in both versions of Windows.
The only feature of these programs that Apple identifies as
being different is that Windows 1.0 allows the user to change
the size of the calculator window but Windows 2.03, like the
Macintosh, does not. This, however, does not involve different
visual displays.
5. _Icons_. In both versions of Windows, a main application
window may be collapsed into an icon which can be moved around
the screen with the mouse. Both versions of Windows also allow
the user to open an icon into its associated window.
Microsoft made some changes in its use of icons between
Windows 1.0 and Windows 2.03. Windows 1.0 allows icons to be
stored only in a special field at the bottom of the screen;
Windows 2.03, like the Macintosh, allows icons to be stored
anywhere on the screen in front of or behind open windows. In
Windows 1.0 the name of an icon, when displayed, is above the
icon; in Windows 2.03 the name of an icon, when displayed, is
below the icon. (11) These changes in the appearance and use of
icons are not covered by the 1985 license.
____
(11) In Windows 2.03, when an icon is at the bottom of the
screen, its name, when displayed, overlaps the icon.
____
6. _Representation of multiple main application windows_.
As the Court noted in its prior Order, the main change from
Windows 1.0 to Windows 2.03 was the change from a tiled display
of multiple main application windows to an overlapping display.
This change had a direct effect on the appearance and
manipulation of windows and required many changes in visual
displays.
In the tiled windowing system used in Windows 1.0, all open
main application windows are visible to the user and are
arranged side by side, like tiles on a floor. The screen is
always entirely filled by whichever windows happen to be open at
any given time. When one window is opened, closed, moved, or
resized, all other windows must be redrawn to accommodate the
change.
In an overlapping window system such as is used in Windows
2.03 and in the Macintosh graphic user interface, open main
application windows are overlapped, appearing like papers
loosely stacked on a desk. The active window is automatically
moved to the top of the stack. Because the open windows
overlap, each window may be sized and moved independently of all
other windows. When one window is opened, closed, moved, or
resized, all other windows remain the same except to the extent
that previously visible portions are covered and previously
covered portions are revealed.
The changes in visual displays from Windows 1.0 to Windows
2.03 necessary to implement the overlapping windows system are
not covered by the 1985 license.
_CONCLUSION_
For the foregoing reasons, the Court holds
(1) that the use of visual displays in Windows 2.03 that
are in Windows 1.0 and the named applications programs is
licensed by the 1985 Agreement;
(2) that the visual displays used in Windows 2.03 are in
Windows 1.0 and the named applications programs except for those
relating to the use of overlapping main application windows, as
opposed to tiled main application windows, and except for the
specified changes in the appearance and manipulation of icons;
and
(3) that Microsoft and its licensee HP are therefore
entitled to partial summary judgement on Apple's infringement
claim insofar as it is based on the use in Windows 2.03 and in
NewWave of visual displays in Windows 1.0 and the named
applications programs.
Accordingly, this ruling constitutes a summary adjudication
that defendants' use in Windows 2.03 and in NewWave of the
visual displays in Windows 1.0 and the named applications
programs is protected against Apple's infringement claim by the
license provision in the 1985 Agreement. In the case of Windows
2.03, this applies to all visual displays except the use of
overlapping main application windows and the specified changes
in the appearance and manipulation of icons.
The Court will therefore now proceed to determine whether
the use of those unlicensed visual displays in combination with
licensed visual displays infringes Apple's audiovisual
copyrights.
Counsel shall meet and discuss how that determination may
be expeditiously and properly made. A status conference will be
held on September 8, 1989 at 10:00 a.m.
IT IS SO ORDERED.
DATED: July 25, 1989
(signed) William W. Schwartzer
United States District Judge
to that of the
Macintosh." (Apple Memo. 7.) Microsoft and HP contend that the
license applies to discrete visual displays in Windows 1.0
individually and, therefore, that Windows 2.03 and NewWave are
covered by the license to the extent that they include visual
displays found in Windows 1.0.
The language of the 1985 Agreement does not support Apple's
restrictive interpretation. The Agreement identifies its
subject matter as "_certain visual displays_ generated by . . .
'Microsoft Windows Version 1.0'" and five named applications
programs. (Microsoft Memo., Ex. A, Agreement, Preamble
(emphasis added).) Microsoft acknowledged that these "_visual
displays . . . are derivative works_ of the visual displays
generated by Apple's Lisa and Macintosh graphic user interface
programs." (_Id_., Para. 1 (emphasis added).)
Apple granted Microsoft a non-exclusive "license to use
_these derivative works_ in present and future software
programs and to license them to . . . third parties." (_Id_., Para. 2
(emphasis added).) Microsoft, in turn, granted Apple a non-
exclusive license "to use any new visual displays created by
Microsoft . . . as part of its Microsoft Windows retail software
product." (_Id_., Para. 5.)
The Agreement makes clear that the parties did not consider
an interface and the visual displays generated by that interface
to be synonymous, and that they chose the words of the license
deliberately. The word "interface" is used in paragraph one in
the context of Microsoft's acknowledgement that the licensed
"visual displays . . . are derivative works of the visual
displays generated by Apple's Lisa and Macintosh graphic user
interface programs." The juxtaposition in that sentence shows
that the terms "visual displays" and "interface," as used in the
Agreement, were not regarded by the parties as interchangeable.
Had it been the parties' intent to limit the license to the
Windows 1.0 interface, they would have known how to say so.
Instead, the "derivative works" covered by the license are
identified as the "visual displays" in the Windows 1.0
interface, not the interface itself. And there is nothing in
the 1985 Agreement that indicates that it was intended as a
product license restricting Microsoft and its licensees to the
use of the Windows 1.0 interface as a whole.
Apple contends that, notwithstanding the absence of any
language in the Agreement to this effect, its negotiators
understood that the license did not allow Microsoft to develop a
new interface more similar to the Macintosh interface. The
history of the negotiations, however, shows that Apple tried but
did not succeed in obtaining Microsoft's agreement to a
limitation of the license to Windows 1.0 taken as a whole,
protecting against the development of interfaces more like the
Macintosh look and feel. 709 F. Supp. at 927. Instead the
parties executed a license to use specified visual displays.
To avoid the plain meaning of the Agreement, Apple seeks to
impose a tortured interpretation on the words "visual display,"
namely that they serve only to "distinguish the computer code of
Windows Version 1.0 from the audiovisual works which the code
produced." (Apple Memo. 9.) Apple bases this argument on the
fact that the Agreement does not anywhere refer to "individual
visual display elements." (_Id_.) The failure of the Agreement
to refer to "individual visual display _elements_", however, does
not mean that, contrary to the plain meaning of the language of
the Agreement, the license is not to use discrete visual
displays. (2)
____
(2) Apple also contends that the use of the words "visual
displays" in the license does "not . . . warrant conversion of
the Agreement into a license (whole or partial) for all future
products created by Microsoft . . . that arguably could trace
some similarity to Windows Version 1.0." (Apple Memo. 9.)
Apple is correct: "visual displays" means what it says, no more
and no less; the use of these words in the license does not
allow Microsoft to develop future versions of Windows as it
pleases," _see_ 709. F. Supp. at 929, and neither does this ruling.
____
That the license of visual displays from Apple to Microsoft
must mean what it says is also confirmed by the use of the same
language in the license from Microsoft to Apple "to use any new
visual displays created by Microsoft . . . in [Apple's] software
programs." (Microsoft Memo., Ex. A, Agreement Para. 5.) This
license clearly gives Apple the right to use individual visual
displays created by Microsoft; Apple is not limited to
incorporating the entire interface into its software programs if
it wishes to use any new visual display created by Microsoft.
This understanding of the effect of the license from Microsoft
was shared by Apple's chief negotiator, Eisenstat, who testified
that the license allowed Apple to incorporate into its Macintosh
interface any "new visual feature" developed by Microsoft for
Windows. (Microsoft Memo. 7.)
Furthermore, as pointed out by Microsoft and HP, Apple's
current interpretation would render the parties' sublicensing
rights worthless. Both Apple and Microsoft rely heavily on
third party programmers to develop applications programs to run
under their respective operating environments, thus enhancing
the value of the operating environments. Applications programs
incorporate a mixture of visual features from the operating
environment and new features added by the applications
programmers. This necessarily changes the visual displays seen
by the user. (3) Under Apple's contention that the licenses extend
to the interface as a whole and do not allow deviation from that
interface, such selective use of visual features from the
operating environment and creation of different visual displays
would violate the licenses. An interpretation that leads to
such a result is unreasonable. (4)
____
(3) As HP points out, if the visual displays were not
affected by an applications program, the user could not tell
that the program was running, control the program, put
information into it, or take information out of it. (HP Memo.
5-6.)
(4) In its comments on the Court's proposed memorandum Apple
retreats from this position, stating that deviations from the
Windows 1.0 interface would be permissible so long as they did
not make "the appearance more similar to Apple's audiovisual
works than was Windows Version 1.0." (Written Comments 6.) Of
course, such language was expressly rejected by Microsoft and is
not found in the Agreement. Moreover, its effect would be to
give Apple a virtual veto power over all new software products
excercisable according to wholly subjective criteria.
____
Thus, as stated in the Court's prior ruling, the language
of the license "allow[s] Microsoft . . . to use the licensed
visual displays in future versions of Windows and in different
applications programs, whether then in existence or not." 709
F. Supp. at 929.
Contrary to Apple's suggestion, there is nothing in the
copyright law that precludes the grant of such a license to use
visual displays and to incorporate them into a new work that
also includes new visual displays. A copyright license is a
contract like any other contract and the starting point of the
analysis must necessarily be the terms of the license. _See
Cohen v. Paramount Pictures Corp._, 845 F.2d 851, 853 (9th Cir.
1988); _see also_ 3 M. Nimmer & D. Nimmer, _Nimmer on Copyright_
Sec. 10.08 (1988). As stated above, the terms of the 1985 license
are clear and unambiguous.
Apple also cites the rule that a licensee infringes the
copyright if he significantly alters the licensed work. This
rule has no application here because Microsoft is not accused of
altering a licensed work; the use of visual displays was
licensed, not use of Windows 1.0 as a whole. Moreover, each of
the cases on which Apple relies for this proposition involved
action by a copyright licensee beyond the scope of the license.
_See, e.g._, _Frank Music Corp. v. Metro-Goldwyn Mayer, Inc._, 772
F.2d 505, 511-12 (9th Cir. 1985) (performance of musical
composition accompanied by visual representations of dramatic
work from which music came violated license expressly limited to
performing music); _Gilliam v. American Broadcasting Co._, 538
F.2d 14, 20-21 (2d Cir. 1976) (licensee's unilateral editing of
television programs violated express provision of license
requiring author's consent for changes). In this case, the
license specifically authorized the use of "visual displays
generated by [Windows 1.0]" "in present and future software
products." (Microsoft Memo., Ex. A, Agreement, Preamble & Para. 2.)
Thus the use of selected visual displays in other programs must
necessarily have been intended -- if it was not, Microsoft would
be exposed to a possible infringement claim whenever it used
anything less than the entire Windows 1.0 interface. Such a
result cannot be squared with the plain language of the
Agreement.
It is, of course, true, as Apple argues, that in
determining whether an audiovisual work infringes, the work must
be viewed as a whole. But where a work includes licensed
features as well as unlicensed features, infringement depends on
whether the unlicensed features are entitled to protection;
licensed features are treated as being in the public domain.
_Cf._ _Data East USA, Inc. v. Epyx, Inc._, 862 F.2d 204, 208 (9th
Cir. 1988) (substantial similarity of unprotected expression
does not support finding of infringement).
In its prior ruling the Court concluded that overlapping
windows, as featured in Windows 2.03, are a visual display
within the meaning of the 1985 Agreement and are not within the
scope of the license. 709 F. Supp. at 929. But overlapping
windows, obviously, are not the only visual display in Windows
2.03. And equally obviously, because Windows 1.0 did not have
overlapping windows, it must have had other visual displays or
else the license would have been an empty gesture. It must be
concluded therefore that the Agreement licenses the use of the
visual displays in Windows 1.0 and to that extent provides a
partial defense to infringement claims based on the use of such
visual displays.
II.
The question before the Court, therefore, is which visual
displays in Windows 2.03 and NewWave are visual displays
licensed under the 1985 Agreement. (5)
____
(5) The Court does not address the questions of whether
Apple's copyright is valid or, if so, whether any unlicensed
visual displays are substantially similar to any of Apple's
copyrighted material.
____
The Agreement does not specifically define the term "visual
display" and, on the record of these motions, there is no basis
for attributing to it a specific, technical meaning. The term
should therefore be given a reasonable interpretation,
consistent with its facial meaning and the purpose of the
license to protect Microsoft against infringement claims for
using visual displays covered by the Agreement. A visual
display necessarily is what the user sees on the screen. In the
context of the Agreement it consists of or includes those
features to which one would look to assess similarity for
purposes of determining whether the copyright has been
infringed. _See_ _Data East_, 862 F.2d at 208.
This interpretation is consistent with Apple's prior usage.
In its previous summary judgement memorandum, Apple referred to a
photograph of a screen display from Windows 2.03 containing
three overlapping windows. (Apple Memo. filed 1/27/89 at 17,
referring to Apple Appendix filed 1/27/89, Ex. 47.) Apple
referred to "all of the visual displays that appear" in this
photograph, and then proceeded to list the following: "the
window border, the window frame, the menu box outline, the
dialog box outline, the scroll bars, check boxes and buttons."
(_Id_.)
Apple has submitted a list of 189 "similarities in
particular features" between its copyrighted audio visual works
and Windows 2.03 and NewWave. (6) (Apple Pretrial Stmt., Ex. A.)
Microsoft claims that 178 of the 189 identified features are
also features of Windows 1.0 and has submitted a video tape in
support of its claim. (Trower Dec. filed 6/9/89, Ex. B
(videotape) and Ex. 2 (list of features).) Apple has also
submitted a list of 39 differences between the features of
Windows 1.0 and those of Windows 2.03, and a videotape
demonstrating some of these differences; it does not contend,
however, that all of these new features infringe its
copyrights. (7) (Exs. A and B to Apple's Memo.) Microsoft
contends that twenty-nine of these differences are not included
in Apple's list of similarities between Windows 2.03 and the
Macintosh user interface, six relate to the change from tiled
to overlapping main application windows, two relate to the changes
in the use of icons, and the other two are trivial. (Microsoft
Response Memo. 22.)
____
(6) Apple has identified an additional fifty visual features
found only in NewWave that it contends are substantially similar
to visual features in the Macintosh user interface.
(7) In fact, some of the items in this list are not found in
the Macintosh graphic user interface.
____
The Court has reviewed all of the papers and related
videotapes submitted by the parties, as well as the exhibits
submitted in this and the previous phase of these summary
judgement motions.
This review discloses that both Windows 1.0 and Windows
2.03 have many visual displays that are also found in the
Macintosh user interface. It also discloses, however, that most
visual displays in Windows 2.03 are also in Windows 1.0 and,
therefore, are covered by the 1985 license.
The features identified by Apple as potentially infringing
fall into six categories: (1) design and appearance of
individual main application windows (Apple Pretrial Stmt., Ex A,
A-2 through A-7, A-9, C, E); (2) design and appearance of dialog
boxes (_id_., J-O); (3) menu design and appearance (_id_., F);
(4) design and appearance of individual applications programs
included with Windows 1.0 and 2.03 (_id_., P-W); (5) icon design,
appearance and manipulation (_id_., G); and (6) arrangement and
manipulation of multiple main application windows (_id_., A-1,
A-8, B, D). The features in the first four and most of the
fifth of these groups are, except for insignificant differences,
the same in the two versions of Windows. (8)
____
(8) All features found in groups H and I and some features in
groups F, G, and J are found in NewWave only; HP does not
contend that they are covered by the license. They are
therefore not affected by this ruling.
____
1. _Appearance of individual main application windows_. The
design and appearance of individual main application windows is
essentially unchanged from Windows 1.0 to Windows 2.03. Under
both versions of Windows, individual main application windows
are bordered rectangles (9) with title bars at the top, scroll bars
on the bottom and right edges, elevator boxes on the scroll
bars, a close-box at the left end of the title bar, (10) and a
sizing box at the bottom right corner of the window. Scrolling
is identical between the two versions. Window sizing is
essentially the same: under both versions, a window may be
resized by dragging the mouse from the lower right corner of the
window and a grey outline of the window follows the mouse.
Although the default colors of the various components of the
windows are different between the two versions, this is not a
significant change. Where Windows 1.0 has a sizing box as the
right end of the title bar, Windows 2.03 has two zoom arrows;
however, the Macintosh has neither of these features.
____
(9) Windows 2.03 added a filled border running completely
around each window. This feature is not found in Macintosh
windows.
(10) The appearance of the close-box was changed slightly.
____
2. _Dialog boxes_. Both versions of Windows use dialog
boxes that may overlap the main application windows and that
contain checkboxes, radio buttons, and rectangular buttons. The
appearance of these items is essentially the same between the
two versions. Microsoft changed the label of a standard button
that appears in all dialog boxes from "Ok" to "OK"; although the
Macintosh also uses "OK," this change is not significant. Minor
changes were made in the underlining of button labels, but this
feature is not found in the Macintosh graphic user interface.
3. _Menus_. Menu design and appearance is essentially the
same in both versions of Windows. A horizontal bar, called the
menu bar, extends across the top of each main application
window. This bar contains a left-justified list of menu names.
When a menu name is selected with the mouse, a pull down menu
appears below the menu name. The pull down menu contains a
vertical list of menu items which can be selected with the
mouse. Windows 2.03 indicates keyboard accelerators, which
allow the user to choose a menu item from the keyboard without
using the mouse, by underlining; Windows 1.0 does not have this
feature, but neither does the Macintosh.
4. _Applications programs_. Both versions of Windows come
with a package of applications programs including a text editor,
paint program, file management program, database management
program, clipboard, clock, and calculator. All of these
programs are essentially the same in both versions of Windows.
The only feature of these programs that Apple identifies as
being different is that Windows 1.0 allows the user to change
the size of the calculator window but Windows 2.03, like the
Macintosh, does not. This, however, does not involve different
visual displays.
5. _Icons_. In both versions of Windows, a main application
window may be collapsed into an icon which can be moved around
the screen with the mouse. Both versions of Windows also allow
the user to open an icon into its associated window.
Microsoft made some changes in its use of icons between
Windows 1.0 and Windows 2.03. Windows 1.0 allows icons to be
stored only in a special field at the bottom of the screen;
Windows 2.03, like the Macintosh, allows icons to be stored
anywhere on the screen in front of or behind open windows. In
Windows 1.0 the name of an icon, when displayed, is above the
icon; in Windows 2.03 the name of an icon, when displayed, is
below the icon. (11) These changes in the appearance and use of
icons are not covered by the 1985 license.
____
(11) In Windows 2.03, when an icon is at the bottom of the
screen, its name, when displayed, overlaps the icon.
____
6. _Representation of multiple main application windows_.
As the Court noted in its prior Order, the main change from
Windows 1.0 to Windows 2.03 was the change from a tiled display
of multiple main application windows to an overlapping display.
This change had a direct effect on the appearance and
manipulation of windows and required many changes in visual
displays.
In the tiled windowing system used in Windows 1.0, all open
main application windows are visible to the user and are
arranged side by side, like tiles on a floor. The screen is
always entirely filled by whichever windows happen to be open at
any given time. When one window is opened, closed, moved, or
resized, all other windows must be redrawn to accommodate the
change.
In an overlapping window system such as is used in Windows
2.03 and in the Macintosh graphic user interface, open main
application windows are overlapped, appearing like papers
loosely stacked on a desk. The active window is automatically
moved to the top of the stack. Because the open windows
overlap, each window may be sized and moved independently of all
other windows. When one window is opened, closed, moved, or
resized, all other windows remain the same except to the extent
that previously visible portions are covered and previously
covered portions are revealed.
The changes in visual displays from Windows 1.0 to Windows
2.03 necessary to implement the overlapping windows system are
not covered by the 1985 license.
_CONCLUSION_
For the foregoing reasons, the Court holds
(1) that the use of visual displays in Windows 2.03 that
are in Windows 1.0 and the named applications programs is
licensed by the 1985 Agreement;
(2) that the visual displays used in Windows 2.03 are in
Windows 1.0 and the named applications programs except for those
relating to the use of overlapping main application windows, as
opposed to tiled main application windows, and except for the
specified changes in the appearance and manipulation of icons;
and
(3) that Microsoft and its licensee HP are therefore
entitled to partial summary judgement on Apple's infringement
claim insofar as it is based on the use in Windows 2.03 and in
NewWave of visual displays in Windows 1.0 and the named
applications programs.
Accordingly, this ruling constitutes a summary adjudication
that defendants' use in Windows 2.03 and in NewWave of the
visual displays in Windows 1.0 and the named applications
programs is protected against Apple's infringement claim by the
license provision in the 1985 Agreement. In the case of Windows
2.03, this applies to all visual displays except the use of
overlapping main application windows and the specified changes
in the appearance and manipulation of icons.
The Court will therefore now proceed to determine whether
the use of those unlicensed visual displays in combination with
licensed visual displays infringes Apple's audiovisual
copyrights.
Counsel shall meet and discuss how that determination may
be expeditiously and properly made. A status conference will be
held on September 8, 1989 at 10:00 a.m.
IT IS SO ORDERED.
DATED: July 25, 1989
(signed) William W. Schwartzer
United States District Judge
--
John Gilmore {sun,pacbell,uunet,pyramid}!hoptoad!gnu gnu@toad.com
"And if there's danger don't you try to overlook it,
Because you knew the job was dangerous when you took it"