chanel@mensa.usc.edu (chanel summers) (03/28/91)
The following summary of proceedings in the Apple vs. Microsoft & HP lawsuit
appeared in the Wednesday, Mary 20, 1991, Daily Appellate Report of the Los
Angeles Daily Journal. Permission has been granted by the Daily Journal to
distribute this file, as the material is a matter of public record.
INTELLECTUAL PROPERTY
Licensing Agreement Provides
Partial Infringement Defense
Cite as 91 Daily Journal D.A.R. 3140
APPLE COMPUTER, INC.,
a California corporation,
Plaintiff,
v.
MICROSOFT CORPORATION, a
Delaware corporation, and
HEWLETT PACKARD COMPANY,
a California corporation,
Defendants.
No. C 88-20149 VRW
United States District Court
Northern District
Filed March 6, 1991
Apple Computer, Inc. ("Apple") filed this copyright infringement action on
March 17, 1988, against Microsoft Corporation ("Microsoft") and Hewlett-Packard
Company ("HP") claiming that Microsoft's Windows computer operating system
software and HP's NewWave computer application software infringed Apple's
copyrights. The copyrights at issue protect the visual displays of Apple's
Macintosh computer user interface.
I. THE VISUAL DISPLAYS OF THE
MACINTOSH INTERFACE.
In developing the Macintosh computer operating system software, Apple made
one of the major commercial breakthroughs of the 1980's. The graphic user
interface generated by the Macintosh system software consists of windows,
icons, pull-down menus, and other images or visual displays projected on the
computer screen. The Macintosh user interface[1] proved so intuitive that users
were able fairly quickly to learn how to manipulate the screen displays and
mouse and thus accomplish what had theretofore been the daunting task of
learning to operate a computer. This breakthrough vaulted Apple to the top of
the personal computer industry.
The visual displays in a computer user interface owe their appearance to
system software and application programs. System software is a computer program
that controls the computer hardware and schedules the execution of its
functions. Such software is keyed to the computer hardware which it runs and
establishes the visual framework or environment for the images on the computer
screen, as does a proscenium in a theatre. In order to put a computer to a
specific task, however, the user also needs an application program -- to
further the stage analogy, the play. Application programs must be keyed to a
particular system software and work within that system's framework or
environment to carry out a specific application or task, e.g., word processing,
accounting, and charting.
The obvious difference between a stage play and a computer interface is that
in the latter, the user directs the action. The "user friendliness" of the
Macintosh interface gave Apple a competitive edge over other personal computer
manufacturers.
The commercial success of the Macintosh user interface and competition
produced by Microsoft's analogous Windows Version 1.0 system software for IBM
and IBM-compatible personal computers spawned a dispute between Apple and
Microsoft over the rightful ownership of visual displays in this interface. The
parties' dispute extended to ownership of visual displays in Microsoft Windows
Version 1.0, and certain application programs: Microsoft Multiplan and
Microsoft Excel, both spread-sheet programs; Microsoft Chart, a graphics
program; Microsoft File, a database program; and Microsoft Word, a word
processing program.[2] On November 22, 1985, Apple and Microsoft entered into
an agreement ("1985 Agreement") to settle this dispute. The effect of that
agreement upon the parties' rights was the first matter which the Honorable
William W. Schwarzer, to whom this case was previously assigned, sought to
determine.
The 1985 Agreement provided that: (1) Microsoft acknowledged that the visual
displays in the Microsoft Windows Version 1.0 operating system and the disputed
application programs were derivative works of the visual displays generated by
Apple's Macintosh operating system and that of an earlier Apple effort, the
Lisa; (2) Apple granted to Microsoft a non-exclusive, royalty-free,
non-transferable license to use these derivative visual displays in present and
future software programs and to license them to third parties for use in new
software programs; (3) Microsoft agreed not to offer a new application program
similar in function to Microsoft Excel prior to October 1, 1986; (4) Apple
waived any copyright, patent, trade secret or other claim it may have as to
Windows Version 1.0; (5) Microsoft granted to Apple a non-exclusive,
royalty-free, non-transferable license to use any new visual displays created
by Microsoft during the next five years as part of the Microsoft Windows retail
software product; and (6) Microsoft agreed to revise Microsoft Word, which
operates on the Macintosh operating system, by enhancing and improving that
program by July 31, 1986.
Relying on this agreement, Microsoft apparently granted HP a license to use
the Microsoft Windows system software in the development of what came to be
known as HP's NewWave application program. Sewell Declaration with Appendix in
Support of Apple's Summary Judgment Motion, Exh. 39. After learning of the HP
NewWave application program and evidently fearing that Microsoft's licensing
activities would soon diminish the Macintosh competitive advantage, Apple filed
this lawsuit.
Apple's complaint alleged three claims: (1) copyright infringement of
Apple's audiovisual works by HP's NewWave and Microsoft's Windows Version 2.03;
(2) contributory infringement against Microsoft for licensing Apple's visual
displays to HP; and (3) unfair competition. Microsoft and HP asserted a variety
of affirmative defenses, including two addressed in this order: Apple's
allegedly fraudulent procurement of its copyrights and the asserted lack of
originality of the Macintosh graphic user interface.
By orders dated March 20 and July 25, 1989,[3] Judge Schwarzer summarily
adjudicated that: (1) the 1985 Agreement was not a complete defense to Apple's
claim of copyright infringement; (2) the 1985 Agreement granted Microsoft a
license to use in current and future software products the visual displays in
Windows Version 1.0 and the five named Microsoft application programs; and (3)
the visual displays in Windows 2.03 are in Windows 1.0 and the named
application programs except for those relating to the use of overlapping main
application windows and to certain changes in the appearance and manipulation
of icons. Judge Schwarzer granted Microsoft partial summary judgment on Apple's
infringement claim to the extent that Windows 2.03 and NewWave used visual
displays that had appeared in Windows Version 1.0 and the five application
programs named in the 1985 Agreement. 717 F.Supp. at 1435. Such visual displays
were protected from Apple's infringement claims by virtue of the 1985
Agreement's licensing provisions. In reaching this conclusion, Judge Schwarzer
rejected Apple's contention that the 1985 Agreement forbade Microsoft from
developing in later system software an overall visual appearance more similar
to that of the Macintosh than Windows Version 1.0. 717 F.Supp. at 1431. Judge
Schwarzer determined that the 1985 Agreement licensed only those visual
displays in Windows Version 1.0 and the five application programs named
therein. 717 F.Supp. at 1435.
Judge Schwarzer's approach entailed analysis of the works' discrete "visual
displays."[4] Pursuant to Judge Schwarzer's direction, Apple identified 189
Macintosh visual displays which it claimed appear in Windows Version 2.03 and
NewWave.[5] Judge Schwarzer reorganized these visual displays into six
categories and decided that with respect to Windows Version 2.03, all visual
displays except the use of overlapping application windows and certain changes
in the appearance and manipulation of icons were protected from Apple's
infringement claims by virtue of the 1985 Agreement.[6] 717 F.Supp. at 1433-35.
By an order to which the parties stipulated during Judge Schwarzer's
supervision of the litigation, this court limited the current phase of
litigation to issues regarding the validity and scope of Apple's copyrights in
the works in suit and whether any of the ten remaining visual displays are
licensed under the 1985 Agreement between Apple and Microsoft.
Presently before the court are: (1) Microsoft's motion for partial summary
judgment, seeking a determination that seven of the ten remaining visual
displays from Apple's List are licensed by the 1985 Agreement, and that none of
the remaining ten features is protectible expression within the scope of any of
Apple's copyrights; (2) HP's motion seeking partial summary adjudication that:
(a) each of the 50 remaining items[7] on Apple's list of similarities
applicable to NewWave is not original; (b) each of the remaining items does not
constitute protectible expression under copyright law; or (c) the scope of
protection for such items is so narrow that only virtually identical copying
can constitute infringement; and (d) all of the remaining 50 items are licensed
visual displays under the 1985 Agreement and are protected against Apple's
claim of copyright infringement; and (3) Apple's motion for partial summary
adjudication that Apple's audiovisual copyrights are valid and the Microsoft
and HP affirmative defenses should be dismissed.
Implicit in Judge Schwarzer's approach to the case is a rejection of Apple's
fundamental contention that the "total concept and feel" of the Macintosh
graphic user interface is protectible expression. Rather, Judge Schwarzer's
approach appears to have been to exclude licensed visual displays prior to
applying the substantial similarity of idea and expression tests. The
undersigned has considered a different approach to the litigation from that
adopted by Judge Schwarzer, one that would not begin by an attempt to parse the
visual displays of the Macintosh system software. However appealing such an
approach might seem in the abstract, the 1985 Agreement appears to license
individual visual displays rather than an overall "total concept and feel."[8]
After lengthy consideration, the undersigned has concluded that Judge Schwarzer
correctly began his analysis of the issues in the litigation with the 1985
Agreement. The court thus turns to the motions directed to the remaining issues
involving the 1985 Agreement.
II. MICROSOFT'S MOTION FOR PARTIAL
SUMMARY JUDGMENT.
In his July 25, 1989 order,[9] Judge Schwarzer found that particular changes
in the appearance and use of icons, namely, the storage of icons anywhere on
the screen rather than just at the bottom of the screen, the display of the
icon's name below the icon, and changes in visual displays necessary to
implement the overlapping windows system, were not licensed under the 1985
Agreement. 717 F.Supp. at 1433-1435. The remaining visual displays are:
A1 overlapping windows in front of a muted background;
A8 windows appearing partly on and off screen;
B1 top overlapping window displayed as the active window;
B2 window brought to top of stack when mouse clicked;
D1 gray outline of window dragged along with cursor when mouse
pressed on window's title bar;
D2 window dragged to a new position when the mouse is released
after dragging the window's outline;
D3 newly exposed areas on screen are redisplayed after the window
is moved;
G4 icon may be moved to any part of screen by dragging along with
cursor when user presses mouse on icon;
G5 display of icons on screen behind any open windows;
G6 icon's title displayed beneath icon; and
In support of its contention that seven of the remaining visual displays
(A1, A8, B1, B2, D1, D2, D3) are licensed, Microsoft has submitted a videotape,
Exhibit H, which shows that each of the seven visual displays appeared in the
1985 version of Microsoft Excel. Microsoft argues that any visual displays in
Windows Version 1.0 and the five application programs developed by Microsoft
(Word, Chart, File, Excel, and Multiplan) are licensed under the 1985 Agreement
and, hence, are protected from Apple's claims of copyright infringement.
Apple contends that each of the Microsoft application programs developed for
the Macintosh computer owes its distinctive Macintosh-like appearance to the
Macintosh system software without which the application programs could not run.
The visual displays which appear on the screen when an application program is
running on a Macintosh computer are generated by the interaction between the
Macintosh system software and the application program. Therefore, contends
Apple, the only visual displays in the five named application programs which
are licensed under the 1985 Agreement are those which are created by the code
of the Microsoft application programs, not those generated by application calls
to the Macintosh system software. The visual displays which are generated by
the Macintosh system software include the window frames, moving animation, and
the redisplay of those portions of the screen exposed by a window which has
been moved. The visual displays which are generated by the Microsoft Excel
application program are the contents of the windows. Capps Supp. Decl.
Paragraphs 3,4 and Exh. 1.
The issue of which visual displays are generated by the Microsoft
application programs and which by the Macintosh system software was raised
earlier before Judge Schwarzer, in a slightly different context. In his March
20, 1989 Order, Judge Schwarzer declined to consider whether the visual
displays in issue were generated by the Microsoft application programs or by
the Macintosh system software. The point arose in connection with Microsoft's
argument that the 1985 Agreement licensed to Microsoft all visual displays that
could possibly be called up by running the five Microsoft application programs
on the Macintosh system software then or in the future. 709 F.Supp. at 929.
Judge Schwarzer concluded that Microsoft's contention would "defy common
sense." Id.
Microsoft refers to the depositions of Albert Eisenstat, Apple's Senior Vice
president, and John Sculley, Apple's President and CEO, in which these
negotiators of the 1985 Agreement did not remember discussing the distinction
between visual displays generated by the Microsoft application software code
and those generated by the Macintosh system software code. Appendix to
Microsoft's Reply to Apple's Response to Microsoft's Motion for Partial Summary
Judgment. Furthermore, Microsoft contends that it would have been extremely
difficult for the negotiators of the 1985 Agreement to determine which visual
displays were attributable to which program codes because such information
would require a detailed analysis of the images created by each software
program.
Apple contends that: (1) the controversy which resulted in the 1985 license
related entirely to Microsoft Windows Version 1.0; (2) Apple did not present
any complaint formally or informally regarding any of the Microsoft application
programs; and (3) Microsoft's Chairman Gates repeatedly explained that he
sought confirmation of Microsoft's ownership of the visual displays in only
those application programs that Microsoft created and owned. Apple's Response
to Defendants' Motions for Partial Summary Judgment at 10.
Under California law, ambiguities in a written agreement are to be
interpreted against the drafter, in this case, Microsoft. See S.O.S., Inc. v.
Payday, Inc., 886 F.2d 1081, 1088 (9th Cir. 1989) (citing Heston v. Farmers
Ins. Group, 160 Cal.App.3d 402, 415 (1984)); Interpetrol Bermuda Ltd. v.
Kaiser Aluminum Int'l Corp. 719 F.2d 992, 998 (9th Cir. 1983)
Moreover, the Ninth Circuit has directed district courts to interpret
copyright licenses narrowly, consistent with the federal copyright policy of
providing incentives in the form of copyright protection to authors. S.O.S.
Payday, 886 F.2d at 1088 ("copyright licenses are assumed to prohibit any use
not authorized"); Cohen v. Paramount Pictures Corp., 845 F.2d 851, 854 (9th
Cir. 1988) In S.O.S. v. Payday, the court concluded that a software developer's
grant of a "right of use" of several software programs to a company which
provided financial services to clients did not confer the right to copy and
prepare a modified version of the software programs without the licensor's
permission. The court concluded that the licensee had only acquired the right
to possess copies of the software programs for purposes of producing a product
for its clients, and, therefore, had exceeded the scope of its license.
Similarly, the Cohen court construed a license of a copyrighted work narrowly.
Cohen involved a license to record and copy a motion picture and exhibit it "by
means of television," which was construed not to include the distribution of
videocassettes for home viewing, VCRs for home use not having been invented at
the time the license was executed.
In light of these rules of construction and the 1985 Agreement's purpose to
resolve the dispute over ownership of visual displays in Windows Version 1.0,
the court concludes that the 1985 Agreement did not license the visual displays
which are generated by calls from the Microsoft application programs to the
Macintosh operating system. The mere fact that the Macintosh system software
was designed so that the Macintosh interface could be used in conjunction with
a variety of application programs written for the Macintosh computer,[10]
should not open the door to a construction at odds with usual principles of
contract law and the agreement's evident purpose. It would be astonishing if
Apple had licensed those visual displays which had won for it great acclaim for
aesthetic and intuitive appeal.
What Microsoft received in the 1985 Agreement was the right to continue to
market its application programs written for the Macintosh and to use the visual
displays generated by those application programs (not the visual displays
generated by calls by the application programs to the Macintosh operating
system) in present and future programs.
Although seven of the eleven remaining visual displays from Apple's List
(A1, A8, B1, B2, D1, D2, and D3) do appear on the screen when the Microsoft
Excel application program runs in conjunction with the Macintosh operating
system, each of those seven visual displays owes its appearance to the
Macintosh operating system. Capps Supp. Declaration. Therefore, those seven
visual displays are not licensed under the 1985 Agreement. Microsoft's motion
for summary adjudication that these displays are covered by virtue of being in
the 1985 version of Microsoft Excel is, therefore, denied.
III. HP'S MOTION FOR PARTIAL SUMMARY
JUDGMENT.
As to the scope of the 1985 Agreement, HP contends that eleven of the fifty
visual displays in Apple's List are covered by the 1985 Agreement and,
therefore, are protected from Apple's claims of copyright infringement. These
visual displays are: I3, I5, I10, I11, 112, F18, F19, G10, G19, G20, and G22.
A determination of the legal significance of undisputed historical facts,
such as the visual displays in Windows Version 1.0 and NewWave, involves a
mixed question of fact and law normally decided by the court and, therefore,
appropriate for summary judgment. See Cohen, 845 F.2d at 853, 855 (reversal of
summary judgment in favor of licensee).
As a preliminary matter, HP's motion for summary adjudication rests on the
assumptions that the 1985 Agreement granted Microsoft the right to use and
license to third parties visual displays in Windows Version 1.0 and that HP is
entitled to use those visual displays by virtue of a license from Microsoft to
HP. The first assumption is plainly justified by Section 2A of the 1985
Agreement. Strangely, the second assumption [is] questionable. HP has not
established the terms of the Microsoft-HP license. Absent such an agreement, HP
has no right to rely on the 1985 Agreement between Microsoft and Apple as a
defense to copyright infringement. Because the parties proceeded with two
summary judgment motions without clarifying this issue and there are letters
referring to a license between Microsoft and HP,[11] the court can only assume
that Microsoft did license the use of visual displays in Windows Version 1.0 to
HP. The court is confident that the lawyers for these parties will be heard
from if this is not the case and shall thus address the merits of HP's motion.
After reviewing the videotape exhibits submitted on this issue and comparing
the appearance of these eleven visual displays in Apple's programs and in
Microsoft Windows Version 1.0, the court drew the following conclusions.
Items I3, I5, I12, F18, F19, and G22 on Apple's List are all present in
Windows Version 1.0 and hence are covered by the 1985 License.
Item I10 is licensed insofar as Windows Version 1.0 contains a "Select All"
item in the Edit pull-down menu which allows the user to select all text in the
window and display that text in reverse video. To the extent that the Windows
Version 1.0 "Select All" item does not permit selection by reverse video of any
icons, the "Select All" item is not licensed.
Item I11, a menu called "View" which presents the user with a number of menu
items allowing the user to choose the folder's window display as icons or as a
tabular list by name, type, or modification date, is licensed except insofar as
Windows Version 1.0's "View" pull-down menu does not offer the user the option
to display a folder's contents as icons in the window.
Item G19, selection of an icon by changing both the icon and its name into
reverse video, is not licensed because in Windows Version 1.0 only disk drive
icons and their names, which are not aligned directly below, can be selected by
reverse video. The appearance of selecting only disk drive icons by reverse
video in Windows Version 1.0 is significantly different from the selection of
the variety of icons in the Macintosh and NewWave programs.
Items G10 and G20 do not appear to be licensed, but the association of
different icon images with different types of objects and the use of a mouse to
move icons around on a screen appear to be ideas. For purposes of the current
motion, the court finds only that items G10 and G20 are not covered by the 1985
Agreement. The idea/expression distinction is properly raised in connection
with the issue of substantial similarity, which is not presently before the
court.
Therefore, the court concludes that items I3, I5, I12, F18, F19, and G22 on
Apple's List are licensed to Microsoft pursuant to the 1985 Agreement and,
assuming that Microsoft licensed the use of these visual displays to HP, are
protected from Apple's claim of copyright infringement.
The following items on Apple's List are unlicensed and pertain to NewWave:
A1, A8, B1, B2, D1-3, G1, G2, G4, G5, G6, G10-33, H1-6, I1, I2, I4, I6-11,
J8-11(55 items total).
C. APPLE'S MOTION FOR PARTIAL SUMMARY
JUDGMENT CONCERNING VALIDITY OF ITS
COPYRIGHTS AND DEFENDANTS'
AFFIRMATIVE DEFENSES.
Apple's motion seeks summary adjudication declaring Apple's audiovisual
copyrights valid and dismissing defendants' affirmative defenses. Following
lengthy consideration, the court has concluded that the present record is
insufficient to conclude that there are no triable issues of fact as to these
matters, with two exceptions: (1) HP's claim of Apple's fraud on the Copyright
Office, and (2) the originality of Apple's visual displays.
To prevail on a claim of copyright infringement, a plaintiff must establish
both ownership of a valid copyright and copying by the defendant. Data East
USA, Inc. v. Epyx, Inc., 862 F.2d 204, 206 (9th Cir. 1988); Sid & Marty Krofft
Television Prod., Inc. v. McDonald's Corp., 562 F.2d 1157, 1162 (9th Cir.
1977); Atari, Inc. v. North American Philips Consumer Elec. Corp., 672 F.2d
607, 614 (7th Cir. 1982); see M. Nimmer, 3 THE LAW OF COPYRIGHT Section 13.01
(1990). Because direct evidence of copying is rare, copying may be established
by circumstantial evidence of access and substantial similarity of ideas and
the expression between the copyrighted work and the alleged infringing work.
Data East, 862 F.2d at 206.
Apple seeks partial summary judgment on the first issue the validity of its
copyrights on the Lisa and Macintosh programs and also asks the court to strike
the defendants' affirmative defenses.[12] In support of its motion, Apple
refers to the transcript of the April 14,1989 Status Conference, at 13-14, in
which counsel for Microsoft and HP stipulated to the presumptively valid
copyright registration of Apple's works in issue. Apple's complaint listed the
allegedly infringed works and the copyright registration numbers. In
Microsoft's answer, Microsoft admitted that Apple received the certificates of
registration for the works in suit. Microsoft's Answer, Paragraph 10.
A certificate of registration from the Copyright Office constitutes "prima
facie evidence of the validity of the copyright and of the facts stated in the
certificate." 17 U.S.C. Section 410(c).[13] This presumption of validity is
rebuttable. Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir.
1980) (evidence in the record casting doubt on validity rebuts presumption);
Past Pluto Prod. Corp. v. Dana, 627 F.Supp. 1435(S.D.N.Y. 1986). The
presumptive validity of a certificate of registration may be resolved on
summary judgment. S.O.S. v. Payday, 886 F.2d at 1086 (citing Seiler v.
Lucasfilm, Ltd., 808 F.2d 1316,1322 (9th Cir. 1986)). Furthermore, the
presumption of copyright validity may not be overcome on the basis of fraud
without proof that omissions in copyright application were intentional. Eckes
v. Card Prices Update, 736 F.2d 859 (2d Cir. 1984). HP opposes Apple's motion
seeking a determination of validity of Apple's certificates on two grounds:
fraud on the Copyright Office and lack of originality.[14]
A. Fraud on the Copyright Office.
HP contends that Apple's failure to disclose to the Copyright Office that
its works were based upon preexisting works should overcome the presumption of
validity of Apple's copyright registrations. HP has provided the court with
depositions and computer magazine articles showing that the Apple
Lisa/Macintosh graphic user interface was strongly influenced by the Xerox
programs, Smalltalk and Star. While it is undisputed that the Lisa and
Macintosh designers were influenced by Xerox's Smalltalk program which used a
mouse and overlapping windows, and by Xerox's Star workstation, which
extensively used icons, such borrowing of ideas does not deprive Apple's works
of their presumption of copyright validity. To require a designer of a computer
graphic user interface to acknowledge sources of artistic influence would be
similar to expecting Roy Lichtenstein to declare in a copyright registration
that a particular work is derivative of a named comic strip. HP's contention
that Apple's failure to disclose the borrowed Xerox material is in itself
adequate to overcome the presumption of validity is unsupported by any binding
precedent. Furthermore, "[a]bsent intent to defraud and prejudice, inaccuracies
in copyright registration do not bar actions for infringement " Harris v. Emus
Records Corp., 734 F.2d 1329, 1335 (9th Cir. 1984). HP has not provided the
court with any evidence of Apple's intent to deceive the Copyright Office and
nevertheless claims that "a triable issue of fact as to Apple's intent remains,
and summary judgment cannot be granted to Apple on the record now before the
Court." HP's opposition to Apple's Motion for Partial Summary Judgment at
15-16.
The parties have recently sent letter briefs to the court regarding the
December 11, 1990 decision and order in Ashton-Tate Corp. v. Fox Software,
Inc., No. CV 88-6837 TJH (C.D. Cal. filed Dec. 12, 1990). HP relied on the
legal conclusion that Ashton-Tate's failure to disclose that its programs were
derived from a computer software program in the public domain invalidated
Ashton-Tate's copyrights on its dBase line of computer software programs.[15]
This court finds the two-page Ashton-Tate decision unhelpful to the resolution
of the pending motions.
HP's contention that Apple's copyrighted works are derivative works is
meritless. A derivative work is one which is substantially copied from a prior
work Litchfield v. Spielberg, 736 F.2d 1352,1357 (9th Cir. 1984), cert. denied
470 U.S. 1052 (1985). The Ninth circuit has stated that a work will be deemed a
derivative work "only if it would be considered an infringing work if the
material which it has derived from a prior work had been taken without the
consent of a copyright proprietor of such prior work." Id. at 1357 (quoting
from United States v. Taxe, 540 F.2d 961, 965 n. 2 (9th Cir. 1976)). All works
are derived to a certain degree from pre-existing works. A derivative work
within the meaning of the copyright law, however, is one which substantially
borrows the expression of ideas from an existing work. M. Nimmer, 1 THE LAW OF
COPYRIGHT Section 3.01 (1990). HP has provided no evidence demonstrating that
Apple's works in suit could be considered to have infringed Xerox's copyrights
or that Apple's works substantially borrowed expressions of ideas from Xerox's
Smalltalk or Star programs.
The purpose of summary judgment is to pierce the pleadings and assess the
proof to determine whether a genuine need for trial exists. Advisory Committee
Note to 1963 Amendment of Fed. R. Civ. P. 56(e). "[T]here is no issue for trial
unless there is sufficient evidence favoring the nonmoving party for a jun to
return a verdict for that party Anderson v. Liberty Lobby, lnc., 477 U.S. 242,
248 (1986). Although inferences are to be drawn in favor of the nonmoving
party, where the moving party has carried its burden under Fed. R. Civ. P.
56(c), the nonmoving party "must do more than simply show that there is some
metaphysical doubt as to the material facts." Matsushita Elec. Industrial Co.
v. Zenith Radio, 475 U.S. 574, 586 (1986). Having reviewed the exhibits offered
in connection with this issue the court concludes there can be no triable issue
that the Apple works in suit substantially borrowed expressions of ideas from
Xerox 's Smalltalk or Star programs.
Finding no evidentiary basis for HP's claim that Apple intended to commit a
fraud on the Copyright Office and finding that the Apple visual displays are
not derivative of the Xerox Star or Smalltalk programs, the court concludes
that HP has failed to establish that Apple perpetrated a fraud on the Copyright
Office.
B. Originality of Apple's visual displays.
HP disputes that Apple's copyrighted works were wholly original to Apple
because those works are "at best derivative of the works of Xerox and others
and more likely merely compilations of preexisting uncopyrightable material."
HP's Opposition to Apple's Summary Judgment Motion, at 3.
The attacks of Microsoft and HP on the validity of Apple's copyrights on the
basis of lack of originality misconstrue the copyright requirement of
originality. The standard of originality required for copyrightability is
minimal. See Atari Games Corp. v. Oman, 888 F.2d 878 (D.C. Cir. 1989) (minimal
degree of creativity required to support a copyright). To fulfill the
originality requirement, a work need only be independently created by the
author and embody a very modest amount of intellectual labor; novelty or
uniqueness is not essential. Baltimore Orioles, Inc. v. Major League Baseball
Players Ass'n., 805 F.2d 663, 668 (7th Cir. 1986), cert. denied 480 U.S. 941
(1987); West Pub. Co. v. Mead Data Cent., Inc., 799 F.2d 1219,1223 (8th Cir.
1986), cert. denied 479 U.S. 1070 (1987). It has been said that the originality
requirement is simply a prohibition of actual copying by the copyright holder.
Abri Games Corp., 888 F.2d at 882; M. Kramer Mfg. v. Andrews, 783 F.2d 421, 437
(4th Cir. 1986).
In Johnson Controls, Inc. v. Phoenix Control Systems, 886 F.2d 1173 (9th
Cir. 1989), the court concluded that the existence of computer programs similar
to plaintiff's program was insufficient to rebut the presumption of validity
absent any evidence that plaintiff copied from the other programs. Similarly,
although there is evidence that Apple's designers borrowed ideas from Xerox's
Smalltalk and Star programs, there is no substantiation for the allegation that
Apple copied protectible elements of expression from those programs. Indeed,
photocopies of visual displays from the Smalltalk and Star programs within the
parties' exhibits reveal scant similarity of expression between Xerox's and
Apple's visual displays. HP's Documentary and Testimonial Evidence in Support
of Motion for Summary Judgment, Exh. 222, 227, 237, 264, 361.
There being no triable issue of fact regarding fraud on the Copyright Office
or lack of originality of Apple's works in suit, Apple's motion for partial
summary judgment that: (1) Apple did not perpetrate a fraud on the Copyright
Office; and (2) Apple's works in suit fulfill the copyright requirement of
originality, is granted. Apple's motion for summary adjudication that its
copyrights are valid is denied without prejudice to renewal. Accordingly, HP's
affirmative defense regarding fraud on the Copyright Office and both HP and
Microsoft's affirmative defenses of lack of originality are dismissed from the
case. HP and Microsoft's defenses to infringement, such as functionality, scope
of protection, merger and scenes a faire doctrines remain in issue and would be
appropriately discussed in connection with an adjudication regarding
substantial similarity.
IV. REMAINING ISSUES.
Microsoft and HP have asked the court for a determination that each of the
remaining visual displays on Apple's List is not entitled to copyright
protection because they are unprotectible ideas, scenes a faire or expressions
which are merged with or indispensable to the ideas they represent. Under Ninth
Circuit precedent, it appears that the issue of merger of idea and expression
can preclude a finding of substantial similarity, but has not been applied to
the issue of the copyrightability of a work. NEC Corp. v. Intel Corp., 10
U.S.P.Q.2d 1177,1179 (N.D. Cal. 1989); see Data East, 862 F.2d at 208;
Frybarger v. Int'l Business Mach. Corp., 812 F.2d 525, 530 (9th Cir. 1987), Sid
& Marty Krofft, 562 F.2d at 1167-69; Herbert Rosenthal Jewelry Corp. v.
Kalpakian, 446 F.2d 738, 742 (9th Cir. 1971) see also M. Nimmer, 3 THE LAW OF
COPYRlGHT Section 13.03[B][3] (1990).
In Aliotti v. R. Dakin & Co., 831 F.2d 898 (9th Cir. 1987) the Ninth Circuit
incorporated the line of cases involving the merger and scenes a faire
doctrines into the "analytical framework of the intrinsic test [the substantial
similarity of expression test]." Id. at 901. Accordingly, such copyright
doctrines, addressing the protectibility of elements of expression, are
appropriately addressed in connection with the second half of the Krofft
bifurcated test of substantial similarity of ideas and expressions.
Although the court did invite motions addressing the issue of "scope of
protection" of Apple's copyrights and the merger doctrine has been applied in
other circuits to preclude copyrightability of a particular work, the court
must follow the law of the Ninth Circuit. Since the court did not invite
motions regarding the issue of substantial similarity, a resolution whether the
works in suit are not substantially similar because of the merger of idea and
expression in Apple's visual displays is premature at this time. Unfortunately,
a substantial portion of HP and Microsoft's moving papers are irrelevant to the
disposition of the current motions.
V. DISCOVERY SCHEDULE.
Counsel are directed to contact the deputy clerk to schedule a status
conference not less than 45 days from the date of this order. The court hereby
imposes a full disclosure obligation on the parties. In advance of the status
conference, therefore, the parties should meet and confer and, with respect to
each claim and defense which the party asserts, disclose the following: (1) the
location of all documents and other tangible evidence which the party has
reason to believe pertain to each claim or defense without regard to the
party's access to or control over the location; (2) the identity of each person
believed to have knowledge of each claim or defense without regard to whether
the person is aligned with the party and a brief narrative statement describing
the party's belief as to the person's knowledge; and (3) an outline of the law
applicable to each claim or defense. Based upon this exchange, the parties
shall prepare a plan of discovery which shall be combined in a single joint
status conference statement which must be filed not less than five days in
advance of the status conference.
IT IS SO ORDERED.
VAUGHN R. WALKER
United States District Judge
NOTES:
1. This case deals only with the graphic elements or visual displays of the
Macintosh user interface. The whole Macintosh user interface includes both its
graphic elements or visual displays and the mouse technology which enables the
user to point on these graphic elements and command some computer operation.
2. Microsoft developed Multiplan, Chart and File under an earlier agreement
with Apple.
3. Apple Computer, Inc. v. Microsoft Corp., 709 F.Supp. 925, 717 F.Supp.
1428 (N.D. Cal. 1989).
4. The term "visual displays" comes from the 1985 Agreement. See Appendix to
Microsoft's Memorandum in Support of Motion for a Partial Summary Judgment,
Exh. K.
5. Apple's document entitled "Similarities between Apple's Copyrighted
Audiovisual Works and Microsoft's Windows 2.03 and Hewlett-Packard's NewWave"
shall hereinafter be referred to as "Apple's List."
6. This holding did not affect the visual displays which Apple claimed are
found only in NewWave. 717 F.Supp. at 1433 n.
7. Although HP correctly states that there are fifty visual displays on
Apple's List which pertain only to NewWave, there are additional visual
displays on Apple's List which refer to both NewWave and Windows 2.03.
8. An evaluation of whether the "total concept and feel" of the works is
substantially similar should occur after unprotectible elements of expression
have been identified and excluded from consideration. Data East USA, Inc. v.
Epyx, Inc. 862 F.2d 204, 208 (9th Cir. 1988)
9. Apple Computer, Inc. v. Microsoft Corp., 717 F.Supp. 1428 (N.D. Cal.
1989)
10. By permitting application programs to call upon the Macintosh system
software to generate visual displays, the Apple software developers simplified
the task of writing application programs for the Macintosh computer.
11. Sewell Declaration with Special Appendix, Exh. 39 and 40.
12. Microsoft's affirmative defenses are: (1) Apple granted Microsoft a
royalty-free license to use the visual displays in issue pursuant to the 1985
Agreement; (2) Apple is precluded by waiver or estoppel from any claims of
ownership or infringement against Microsoft products; (3) Apple has failed to
state a claim for contributory infringement; (4) Apple's visual displays are
functional and hence barred from copyright protection under 17 U.S.C. Section
102(b); (5) Apple's visual displays are not original to Apple and are not
entitled to copyright protection under 17 U.S.C. Section 102(a); (6) Apple's
unusual displays are common and ordinary expressions of unprotectible ideas and
are not susceptible to copyright protection under the scenes-faire doctrine of
copyright law; (7) no substantial similarity exists between Apple's visual
displays and Microsoft's Windows 2.03 software product; and (8) Apple's claim
or unfair competition is preempted by 17 U.S.C. Section 301.
HP's affirmative defenses are: (1) Apple's visual displays are unprotectible
ideas, indispensable expression, and/or non-original expression; (2) fraud on
the Copyright Office; (3) Apple's visual displays are functional; and (4)
AppIe's works are entitled to a limited scope of copyright protection.
13. Section 410(c) provides:
In any judicial proceedings the certificate of a registration made
before or within five years after first publication of the work shall
constitute prima facie evidence of the validity of the copyright and
of the facts stated in the certificate. The evidentiary weight to be
accorded the certificate of a registration made thereafter shall be
within the discretion of the court.
14. Microsoft also contests the originality of Apple's works.
15. HP's assertion in its letter brief that it has not yet taken any
discovery on the subject of Apple's inequitable intent does not preclude
summary adjudication of that issue. HP has had ample time to conduct
discovery on the issues of the originality and validity of Apple's
copyrights on the works in suit, including intent to deceive the Copyright
Office. Judge Schwarzer afforded HP that opportunity.
Attorneys for Plaintiff Apple Computer, Inc.
Mr. Chris R. Ottenweller
BROWN & BAIN
600 Hansen Way
Suite 100
Palo Alto, CA 94306
Mr. Jack E. Brown
BROWN & BAIN
2901 North Central Avenue
Suite 2000
Phoenix, AZ 85012
Attorneys for Defendant Microsoft Corporation
David T. McDonald
Karl J. Quackenbush
McDonald & Quackenbush
5250 Washington Mutual Tower
Seattle, Washington 98101
(206) 224-7099
William O. Ferron,Jr.
Seed & Berry
6300 Columbia Center
Seattle, Washington 98104
(206) 622-4900
John N. Hauser
Lynn H. Pasahow
McCutchen, Doyle, Brown & Enersen
Three Embarcadero Center
San Francisco, California 94111
(415) 393-2000
David H. Binney
Robert W. Gomulkiewicz
Preston, Thorgrimson, Shidler, Gates & Ellis
3500 First lnterstate Center
Seattle, Washington 98104
(206) 223-4600
Attorneys for Defendant Hewlett-Packard Co.
Mr. Jon Stark
PENNIE & EDMONDS
1155 Avenue ofthe Americas
New York, NY 10036
Neil Boorstyn
McCUTCHEN, DOYLE, BROWN & ENERSEN
Three Embarcadero Center
Suite 2800
San Francisco, CA 94111