Beruflich Dokumente
Kultur Dokumente
3d 1548 Page 1
89 F.3d 1548, 65 USLW 2175, 1996 Copr.L.Dec. P 27,559, 39 U.S.P.Q.2d 1609
(Cite as: 89 F.3d 1548)
[19] Copyrights and Intellectual Property Appeal from the United States District Court
99 67.3 for the Southern District of Florida.
truss specifications and drawings for the arrangement.FN8 In March of *1552 1991,
planned structures. After fabricators began ACES Version 3 was published and featured
using personal computers, layout some enhanced graphics capabilities.
programs, like the ones at issue in this
FN4
case, were developed to permit fabricators to FN5. Given the subject matter of the
do their own engineering and related work programs, roof truss design, it is
for their building designs, thereby inevitable that there will be
eliminating the need to employ an engineer. similarities, particularly in the
output. “Substantial similarity,” in
FN4. A wood truss “layout program” the copyright context, refers to
is a computer program that appropriation by the putative
graphically draws and places wood infringer of the “fundamental
trusses on the walls of a building essence or structure” of a protected
structure, indicating the size and work. Computer Assocs. Int'l, Inc. v.
location of the trusses. Altai, Inc., 982 F.2d 693, 701 (2d
Cir.1992) (citation omitted).
[1] In this case, the parties disagree over
whether or not the layout programs are FN6. The district court found that
“substantially similar” in a copyright “[a]t this time, another software
context, but both sides agree that the company, Online, had developed a
programs at issue were written by the same program known as ‘Trusstar’ which
author, Emilio Sotolongo (“Sotolongo”).FN5 used intersecting planes and was
In 1988, Sotolongo began working in Miami considered to be superior to existing
for Advanced Computer Engineering layout programs that could only
Specialties, Inc. (“Aces”), the software arm depict truss layouts two-
of the Bemax Companies (“Bemax”). dimensionally.” MiTek, 864 F.Supp.
Bemax sold connector plates to the wood at 1572. In order to have a better
truss industry. Sotolongo was employed by understanding of what Aces wanted
Aces to develop a wood truss layout to develop, Sotolongo visited one of
program that depicted three-dimensional Aces's clients, a truss manufacturer,
representations of truss layouts.FN6 Version 1 to observe the operation of Online's
of the ACES program was published in Trusstar program firsthand. It was
March of 1989, upon display of the program the goal of Aces for Sotolongo to
at a trade show. ACES Version 1 was well write a program that, while utilizing
received by the wood truss industry.FN7 some of the same ideas used in
However, since Version 1 did not have its Trusstar, would be more “user
own printing functions, Sotolongo was friendly.” The district court found
asked to develop an improved version that that Sotolongo intended on
would permit the user to print the layout. accomplishing this by having his
Aces released Version 2 in September of program “logically follow[ ] the
1990. This version not only featured printing steps a draftsman would go through
capabilities, but also had expanded memory in developing a layout by hand.” Id.
capacity and a slightly different screen
principal programmer for all three versions object code from the ACES programs.FN11 In
of the ACES program. The ACES programs, August of 1991, Sotolongo completed
however, were written for the MS-DOS TrussPro, and customer testing of the
(“DOS”) operating system, which was program began shortly thereafter. By early
starting to be replaced by the more user- November, Aces had released Version 3 of
friendly Windows operating system.FN10 its layout program. On November 15, 1991,
MiTek filed suit against ArcE and alleged
FN10. The district court noted that copyright *1553 infringement.FN12 ArcE
“[t]he Aces programs mimicked a counterclaimed that MiTek's institution of
Windows-type program by giving the action constituted an abuse of process
the user the option of either typing in under Florida law. On December 9, 1993,
commands by hand or using a mouse the district court granted MiTek's motion to
to activate functions of the program dismiss ArcE's counterclaim, finding that an
through the use of pull-down abuse of process claim cannot be based
menus.” MiTek, 864 F.Supp. at 1574. solely on the filing of an allegedly meritless
Although the program mimicked a complaint.FN13MiTek, 864 F.Supp. at 1574.
Windows-type environment, it still On that same day, the district court granted
was not as user-friendly, for it lacked MiTek's motion to waive a jury trial. MiTek
certain distinctive features that elected not to seek actual damages in the
generally appear in application case but rather limited itself to statutory
programs written for Windows. As damages and attorneys' fees pursuant to 17
the district court noted, “[t]hese U.S.C. §§ 504(c) & 505. Accordingly, it had
features include the use of icons no constitutional or statutory right to a jury
instead of words, a ‘frame’ around trial. See Cable/Home Communication
the program which contains certain Corp. v. Network Prods., Inc., 902 F.2d 829,
elements such as a ‘button’ at the top 852-53 (11th Cir.1990) (noting that “in an
left, scroll bar arrows at the right and equitable copyright infringement seeking
the bottom, and a menu bar at the only minimum statutory damages and
top.” Id. In addition, according to injunctive relief, there is ‘no constitutional
MiTek's expert witness, “[a] or statutory right to a jury trial’ ”) (quoting
Windows program also has certain Twentieth Century Music Corp. v. Frith, 645
file access features, help features, F.2d 6, 7 (5th Cir. Unit B May 1981) (per
and printing features different from curiam)). A six-day bench trial was held in
traditional DOS programs.” Id. For a December, at the conclusion of which the
comparison of the main menu bar of district court ruled in favor of ArcE.
the ACES program (DOS) with that
of TrussPro (Windows), see FN11. The district court found that
Appendix A. Sotolongo did not refer to any notes
regarding the ACES programs
Sotolongo accepted ArcE's offer of because he had not taken any, and
employment. Arce testified that he instructed that he erased all of the code that he
Sotolongo to write the new layout program had relating to the ACES layout
“from scratch,” not to rely on any source or programs. MiTek, 864 F.Supp. at
“expressive features in the Aces layout expression from unprotected ideas,FN16 and,
programs Versions 1, 2 and 3” that he in this case, *1556 MiTek presented this
deemed to be “original.” R5-367-68; see analysis to the court. Therefore, there is no
also Plaintiff's Exh. 18L, pp. 4-5. This same merit to MiTek's claim that the district court
list was presented to the court by MiTek in erred in failing to perform an abstraction
its Proposed Findings of Fact and under the Altai test or in failing to undertake
Conclusions of Law. R2-104-10-12. In other a similar type of analysis.
words, the district court took at face value
MiTek's representations as to what elements FN15. The “literal elements” of a
of the ACES program MiTek considered to computer program are its source and
be protectable expression. In accepting object code. Source code is a
MiTek's representations, the district court symbolic language that humans can
committed no error. read, whereas object code is a
translation of the source code into a
[8][9][10] What MiTek apparently fails to series of zeros and ones that is
appreciate is that the ultimate burden is on readable by a computer. For a more
the copyright holder to prove infringement. detailed description of source and
Therefore, if the copyright holder presents object code and the issues related to
the court with a list of features that it computer code, see Bateman, 79 F.3d
believes to be protectable (i.e., original and at 1539 n. 17 & n. 18. In this case,
outside of 17 U.S.C. § 102(b)), the court we are concerned not with literal
need not abstract further such features. elements of a computer program,
Perhaps the best approach for a district court because MiTek concedes that the
in any computer program infringement case, source and object codes of the two
whether involving literal or nonliteral programs are not substantially
elements,FN15 is for it to require the copyright similar. What is at issue are the
owner to inform the court as to what aspects “nonliteral elements” of a program,
or elements of its computer program it which are the products that are
considers to be protectable. This will serve generated by the code's interaction
as the starting point for the court's copyright with the computer hardware and
infringement analysis. While it is not clear operating program(s). Examples of
that the district court specifically requested nonliteral elements of a computer
this list, or if MiTek offered it to the court, program include its screen displays
the desired result nonetheless was achieved and the main menu and submenu
because MiTek provided the court with such command tree structure contained
a delineation. After submitting a thereon.
specification of the elements that it deemed
to be protectable, MiTek cannot now argue FN16. The Altai test was formulated
that the district court failed to abstract “to determine whether the nonliteral
further the elements of its own designation elements of two or more computer
of protectable features. The purpose of the programs are substantially similar.”
abstraction portion of the Altai test is to Altai, 982 F.2d at 706. The Altai case
enable courts to separate protectable was concerned with the nonliteral
a virtual identicality between the ACES are not convinced, however, that the district
program and TrussPro, and thus MiTek's court incorrectly applied the substantial
compilation copyright infringement claim identicality standard, because in the
must fail. comparison section of the opinion, the
district court stated:
FN25. The use of icons as opposed Having distilled the Plaintiffs' programs
to words in command functions is to their core of protectable expression, the
one of the most noticeable Court now must compare these elements
differences between programs that to the Defendant's program. If any of the
operate in the Windows environment core elements have been copied, the Court
and those that operate in the DOS will look at the relative importance of the
environment. See Appendix A. copied elements to the overall program to
determine whether or not the Aces Layout
5. The Standard Applied in Comparing the Programs are substantially similar to the
Elements Found to be Copyrightable Arc[E] Program....
The Court finds that of the five
[19] MiTek further contends that the district protectable elements identified in the Aces
court, in comparing to TrussPro the five Layout Programs, four are substantially
nonliteral elements of the ACES program similar to elements in the Arc[E]
that it deemed to be protectable, erroneously programs.
employed a “substantial identicality”
standard rather than the appropriate MiTek, 864 F.Supp. at 1584 (emphasis
“substantial similarity” standard. MiTek's added). Based on its comparison, it appears
challenge is based on the following portion that the district court used imprecise
of the district court's opinion: “When language regarding “substantial identicality”
comparing the core protectable elements of in an earlier portion of its opinion and later
the copyright-holder's program to the correctly compared for substantial similarity
alleged infringer, the Court will employ the in reaching its ultimate conclusion. There is
substantial identicality standard applied by no indication that it applied a substantial
the Ninth Circuit to nonliteral elements of identicality standard in its comparison
computer programs, such as visual analysis; in fact, the language of the district
displays.” 864 F.Supp. at 1578-79. court's opinion leads us to conclude that it
correctly compared for substantial similarity.
If the district court did apply the substantial Thus, there is no merit to MiTek's contention
identicality standard in performing the that the district court erred in comparing the
comparison portion of the abstraction- protectable elements of the ACES program
filtration-comparison test, then it erred in to elements in TrussPro.
doing so. Our circuit, in applying the Altai
test, employs the substantial similarity 6. De Minimus Copying of the
standard in comparing what remains after Copyrightable Elements of the ACES
the abstraction and filtration steps with Program
respect to noncompilation copyrighted
works. See Bateman, 79 F.3d at 1541-45. We [20] MiTek argues that the district court
END OF DOCUMENT
C.A.11 (Fla.),1996.
MiTek Holdings, Inc. v. Arce Engineering
Co., Inc.
89 F.3d 1548, 65 USLW 2175, 1996
Copr.L.Dec. P 27,559, 39 U.S.P.Q.2d 1609