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89 F.

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)

MiTek Holdings, Inc. v. Arce Engineering Affirmed.

Co., Inc.
C.A.11 (Fla.),1996. West Headnotes

United States Court of Appeals,Eleventh [1] Copyrights and Intellectual Property

Circuit. 99 51
MiTek Industries, Incorporated, Plaintiffs- 99 Copyrights and Intellectual Property
Appellants, 99I Copyrights
v. 99I(J) Infringement
INCORPORATED, Defendant-Appellee. Infringement
No. 94-5262. 99k51 k. Nature and Elements
of Injury. Most Cited Cases
Aug. 5, 1996. “Substantial similarity” in copyright context
refers to appropriation by putative infringer
Holder of copyright for wood truss drafting of fundamental essence or structure of
program brought infringement action against protected work.
competitor. The United States District Court
for the Southern District of Florida, No. 91- [2] Copyrights and Intellectual Property
2629-CIV-KMM, K. Michael Moore, J., 99 51
entered judgment in favor of competitor, 864
F.Supp. 1568, and copyright holder 99 Copyrights and Intellectual Property
appealed. The Court of Appeals, Birch, 99I Copyrights
Circuit Judge, held that: (1) in applying 99I(J) Infringement
abstraction-filtration-comparison test to 99I(J)1 What Constitutes
determine whether copyrighted computer Infringement
program was infringed, district court was 99k51 k. Nature and Elements
not required to apply additional abstraction of Injury. Most Cited Cases
after copyright holder identified elements of To establish copyright infringement, plaintiff
its programs that it claimed were entitled to must prove ownership of valid copyright,
protection; (2) program's menu and submenu and copying of constituent elements of work
command tree structure was uncopyrightable that are original.
process; (3) even assuming that selection,
coordination and arrangement embodied in [3] Copyrights and Intellectual Property
program and its user interfaces were entitled 99 83(3.1)
to compilation copyright protection,
competitor's drafting program was not 99 Copyrights and Intellectual Property
infringing; and (4) competitor's copying of 99I Copyrights
protectable elements of copyrighted 99I(J) Infringement
programs was de minimis and not 99I(J)2 Remedies
actionable. 99k72 Actions for

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99k83 Evidence only that portion of work copied is original
99k83(3) Weight and and thus protectable, but also that copying of
Sufficiency copyrighted material was so extensive that it
99k83(3.1) k. In rendered offending and copyrighted works
General. Most Cited Cases substantially similar. 17 U.S.C.A. § 102(b).
Proof of copying as factual matter may be
shown in copyright infringement case either [6] Federal Courts 170B 776
by direct evidence, or in absence of direct
evidence, it may be inferred from indirect 170B Federal Courts
evidence demonstrating that defendant had 170BVIII Courts of Appeals
access to copyrighted work and that there 170BVIII(K) Scope, Standards, and
are probative similarities between allegedly Extent
infringing work and copyrighted work. 170BVIII(K)1 In General
170Bk776 k. Trial De Novo.
[4] Copyrights and Intellectual Property Most Cited Cases
99 51 On appeal in copyright infringement case,
district court's conclusions of law are
99 Copyrights and Intellectual Property reviewed de novo.
99I Copyrights
99I(J) Infringement [7] Copyrights and Intellectual Property
99I(J)1 What Constitutes 99 67.3
99k51 k. Nature and Elements 99 Copyrights and Intellectual Property
of Injury. Most Cited Cases 99I Copyrights
Copyright infringement occurs only if one 99I(J) Infringement
copies protected elements of copyrighted 99I(J)1 What Constitutes
work; in other words, portion of copyrighted Infringement
work that is copied must satisfy 99k67.3 k. Other Works. Most
constitutional requirement of originality. Cited Cases
U.S.C.A. Const. Art. 1, § 8, cl. 8. In applying abstraction-filtration-
comparison test to determine whether
[5] Copyrights and Intellectual Property copyrighted computer program was
99 51 infringed, district court was not required to
apply additional abstraction after copyright
99 Copyrights and Intellectual Property holder identified elements of its programs
99I Copyrights that it claimed were entitled to protection. 17
99I(J) Infringement U.S.C.A. § 102(b).
99I(J)1 What Constitutes
Infringement [8] Copyrights and Intellectual Property
99k51 k. Nature and Elements 99 67.3
of Injury. Most Cited Cases
In order for plaintiff to prevail on claim of 99 Copyrights and Intellectual Property
copyright infringement, court must find not 99I Copyrights
89 F.3d 1548 Page 3
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(Cite as: 89 F.3d 1548)

99I(J) Infringement purposes of copyright infringement analysis,

99I(J)1 What Constitutes are its source and object code. 17 U.S.C.A. §
Infringement 102(b).
99k67.3 k. Other Works. Most
Cited Cases [11] Copyrights and Intellectual Property
If copyright holder presents district court 99 10.4
with list of features of copyrighted computer
program that it believes to be protectable, 99 Copyrights and Intellectual Property
court need not abstract further such features. 99I Copyrights
17 U.S.C.A. § 102(b). 99I(A) Nature and Subject Matter
99k3 Subjects of Copyright
[9] Copyrights and Intellectual Property 99k10.4 k. Other Works. Most
99 88 Cited Cases
Roof truss drafting program's menu and
99 Copyrights and Intellectual Property submenu command tree structure was
99I Copyrights uncopyrightable process; means by which
99I(J) Infringement program undertook task of drafting roof
99I(J)2 Remedies truss planes mimic steps draftsman would
99k72 Actions for follow in designing roof truss plans by hand.
Infringement 17 U.S.C.A. § 102(b).
99k88 k. Trial. Most Cited
Cases [12] Copyrights and Intellectual Property
Best approach for district court in any 99 10.4
computer program copyright infringement
case, whether involving literal or nonliteral 99 Copyrights and Intellectual Property
elements, is for it to require copyright owner 99I Copyrights
to inform court as to what aspects or 99I(A) Nature and Subject Matter
elements of its computer program it 99k3 Subjects of Copyright
considers to be protectable; this will serve as 99k10.4 k. Other Works. Most
starting point for court's copyright Cited Cases
infringement analysis. 17 U.S.C.A. § 102(b).
Patents 291 7.14
[10] Copyrights and Intellectual Property
99 67.3 291 Patents
291I Subjects of Patents
99 Copyrights and Intellectual Property 291k4 Arts
99I Copyrights 291k7.14 k. Particular Processes
99I(J) Infringement or Methods as Constituting Invention. Most
99I(J)1 What Constitutes Cited Cases
Infringement Patent and copyright laws protect distinct
99k67.3 k. Other Works. Most aspects of computer program; patent law
Cited Cases provides protection for process or method
“Literal elements” of computer program, for performed by computer in accordance with

© 2008 Thomson/West. No Claim to Orig. U.S. Govt. Works.

program, whereas copyright protects only
expression of that process or method. 17 99 Copyrights and Intellectual Property
U.S.C.A. § 102(b). 99I Copyrights
99I(A) Nature and Subject Matter
[13] Copyrights and Intellectual Property 99k3 Subjects of Copyright
99 10.4 99k10.4 k. Other Works. Most
Cited Cases
99 Copyrights and Intellectual Property Even if roof truss drafting program's use of
99I Copyrights trapezoid as means of visually depicting
99I(A) Nature and Subject Matter planes was entitled to copyright protection,
99k3 Subjects of Copyright competitor's use of trapezoids in drafting
99k10.4 k. Other Works. Most program was nothing more than
Cited Cases nonactionable de minimis copying. 17
Even if roof truss drafting program's menu U.S.C.A. § 102(b).
and submenu command tree structure was
not uncopyrightable process, such feature [16] Copyrights and Intellectual Property
was not sufficiently original to be entitled to 99 10.4
copyright protection; look of program was
basically industry standard for computer 99 Copyrights and Intellectual Property
aided-design (CAD) programs, with menu 99I Copyrights
bars running across top and right, and large 99I(A) Nature and Subject Matter
work area occupying most of screen, and 99k3 Subjects of Copyright
followed steps draftsman would follow in 99k10.4 k. Other Works. Most
designing roof truss plan by hand. 17 Cited Cases
U.S.C.A. § 102(b). Even assuming that selection, coordination
and arrangement embodied wood truss
[14] Copyrights and Intellectual Property drafting program and its user interfaces were
99 10.4 entitled to compilation copyright protection,
competitor's drafting program was not
99 Copyrights and Intellectual Property infringing; competitor's program depicted its
99I Copyrights commands as icons in the Windows
99I(A) Nature and Subject Matter environment, rather than as words, as in the
99k3 Subjects of Copyright copyrighted program. 17 U.S.C.A. § 101.
99k10.4 k. Other Works. Most
Cited Cases [17] Copyrights and Intellectual Property
Roof truss drafting program's use of 99 12(3)
trapezoids in truss design as means of
visually depicting planes was not 99 Copyrights and Intellectual Property
sufficiently original to be entitled to 99I Copyrights
copyright protection. 17 U.S.C.A. § 102(b). 99I(A) Nature and Subject Matter
99k12 Originality of Work;
[15] Copyrights and Intellectual Property Creativity
99 10.4 99k12(3) k. Compilations and
89 F.3d 1548 Page 5
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)

Derivative Works; Copies and standard.

Reproductions. Most Cited Cases
Computer program's user interface may be [20] Copyrights and Intellectual Property
entitled to copyright protection as 99 67.3
compilation; in order to receive this
protection, however, compilation copyright 99 Copyrights and Intellectual Property
must be original and expressive. 17 99I Copyrights
U.S.C.A. § 101. 99I(J) Infringement
99I(J)1 What Constitutes
[18] Copyrights and Intellectual Property Infringement
99 12(3) 99k67.3 k. Other Works. Most
Cited Cases
99 Copyrights and Intellectual Property Alleged infringer's copying of protectable
99I Copyrights elements of copyrighted wood truss drafting
99I(A) Nature and Subject Matter programs was de minimis and not
99k12 Originality of Work; actionable; copied elements were not
Creativity significant in context of programs as a
99k12(3) k. Compilations and whole.
Derivative Works; Copies and
Reproductions. Most Cited Cases *1550 John H. Quinn,Keith A. Rabenberg,
“Bodily appropriation of expression” or St. Louis, MO, Stuart J. McGregor, Miami,
“virtual identicality” standard should be FL, Baila H. Celedonia, Cowan Liebowitz &
used in analyzing claims of compilation Latman, PC, New York City, for Appellants.
copyright infringement of nonliteral Gustavo Gutierrez, P.A., Miami, FL,
elements of computer program. 17 U.S.C.A. Christopher M. Hewitt, Hewitt & Hewitt,
§ 101. P.C., Dallas, TX, for appellee.

[19] Copyrights and Intellectual Property Appeal from the United States District Court
99 67.3 for the Southern District of Florida.

99 Copyrights and Intellectual Property Before BIRCH and CARNES, Circuit

99I Copyrights Judges, and SIMONS FN*, Senior District
99I(J) Infringement Judge.
99I(J)1 What Constitutes
Infringement FN* Honorable Charles E. Simons,
99k67.3 k. Other Works. Most Jr., Senior U.S. District Judge for the
Cited Cases District of South Carolina, sitting by
In comparing allegedly infringing program designation.
to five nonliteral elements of copyrighted
wood truss drafting programs that district BIRCH, Circuit Judge:
court deemed to be protectable, court This case presents our circuit with an issue
properly applied substantial similarity of first impression, namely, the scope of
standard, rather than substantial identicality copyright protection afforded to nonliteral

© 2008 Thomson/West. No Claim to Orig. U.S. Govt. Works.

elements of a computer program. The holder *1551 injunction.FN3 The district court
of copyright registrations in three versions conducted a bench trial and, in its findings
of a wood truss layout program brought an of facts and conclusions of law, found in
infringement action against a competitor and favor of ArcE. See MiTek Holdings, Inc. v.
alleged infringement of several of the Arce Eng'g Co., 864 F.Supp. 1568
program's nonliteral elements, including the (S.D.Fla.1994). Before we address the
menu and submenu command tree structure numerous issues on appeal, it is important to
and other elements of the user interface. At provide some background as to both the
the conclusion of a bench trial, the district wood truss industry and the relationship
court found that the copyright registrant's between the parties to this litigation.
program contained largely unprotectable
elements, and, in those instances where FN1. We refer to Arce Engineering
elements were protectable and appropriated as “ArcE”, rather than “Arce,” to
by the putative infringer, it deemed the avoid confusion with the name of
copying to be de minimis. Therefore, the one of the principals of ArcE,
district court entered judgment for the Antonio Arce.
putative infringer on the copyright
infringement claim and denied the copyright FN2. This program has also been
registrant's motion for a preliminary called “LayoutPro Layout Program”
injunction. For the reasons that follow, we and the “FramePro Layout
AFFIRM the judgment of the district court. Program.”

I. BACKGROUND FN3. MiTek did not file suit until

after it had registered its claims of
Plaintiffs-appellants MiTek Holdings, Inc. copyright in all three versions of the
and MiTek Industries, Inc. (“MiTek”), hold ACES program.
registration certificates for their claims of
copyright in three versions of the ACES Both MiTek and ArcE are in the business of
wood truss layout program, known as ACES supplying products and services to the wood
Layout Versions 1, 2, and 3. Defendant- truss industry. A wood truss is a group of
appellee, Arce Engineering Company, Inc. wood beams, usually triangular in shape,
(“ArcE”),FN1 is the producer of a layout that supports a roof; the beams in a wood
program known as TrussPro.FN2 The only truss are held together by connector plates.
version of TrussPro at issue in this case is Wood trusses often are not constructed by
TrussPro Layout Program Version 1, and we the builder, but rather by off-site
will refer to that ArcE program as “fabricators”, who build roof trusses to
“TrussPro.” There is no dispute that the certain specifications and then deliver them
ACES program, at least its first two in bulk to building sites. The use of off-site
versions, were released prior to the fabricators reduces construction time as well
publication of TrussPro. A few months after as labor costs. Prior to the advent of
ArcE released TrussPro, MiTek filed suit personal computers, fabricators would
against ArcE, alleged copyright design and arrange the wood trusses by
infringement, and sought a preliminary engaging an engineer to obtain the necessary
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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

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

© 2008 Thomson/West. No Claim to Orig. U.S. Govt. Works.

FN7. As noted by the district court, acquisition was not going to occur, and, as a
the market for wood truss layout reward for his loyalty, he was given a raise.
programs “had grown increasingly
competitive by early 1989, when Contrary to what Sotolongo was advised,
layout programs were being MiTek purchased Aces for $2.5 million on
marketed by other software April 1, 1991. As part of the purchase,
companies, including Online, Alpine, MiTek received an assignment of Aces's
Hydro-Air and Gang-Nail.” MiTek, copyrights in the layout programs at issue in
864 F.Supp. at 1572. this case.FN9 Eugene Toombs, the president
and chief executive officer of MiTek,
FN8. Version 1 featured a three-box testified at trial that “the reason we paid the
visual display, whereas Version 2 price we did [for Bemax/Aces], very frankly,
featured a four-box visual display; was because of the software,” and he further
the extra box was the result of the stated that the ACES layout program was the
addition of a top bar main menu. The “key” to the software. R6-485. After the sale
other three boxes are the work space was announced, Sotolongo inquired of
area, which occupies most of the MiTek if its preacquisition offer was still
screen, the command trees running open. He was told that it was not, since
down the right side of the screen, and MiTek now had acquired the intellectual
a command module running along property rights to the ACES program. MiTek
the bottom of the screen. did offer Sotolongo a job, but at a salary
lower than that previously offered.
During the process of developing Version 3
of the ACES program, Sotolongo was FN9. It is undisputed that Sotolongo
approached by Art Sordo, MiTek's President wrote the three ACES programs as a
of Operations, to gauge his interest in work-for-hire employee, and he
working for MiTek. MiTek wanted advances no claim that the
Sotolongo to compose a new truss layout copyrights belong to him, not MiTek
program that was superior to the ACES (via assignment from Aces). See17
program. Although MiTek offered Sotolongo U.S.C. § 201(b) (1996).
a significant raise, he declined the offer, in
large part because MiTek made its At approximately the same time, Antonio
programmers maintain detailed logs and Arce, one of the principals of ArcE,
notes of the steps taken in writing their approached Sotolongo and recruited him to
programs. Sotolongo testified that he come work for ArcE. ArcE owned a layout
preferred to work without notes and that he program, but it operated only on Hewlett
often would conceptualize program Packard equipment, and ArcE wanted
segments in his mind. Sotolongo advised Sotolongo to develop a program that
Aces of the MiTek offer and explained his functioned in the Microsoft Windows
reasons for rejecting it. He was concerned, (“Windows”) environment on International
however, with rumors that MiTek was going Business Machines Corp. (“IBM”)
to acquire Aces, and he asked Aces about compatible computers. Arce testified that he
this. Sotolongo was assured that the was aware that Sotolongo had been the
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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

© 2008 Thomson/West. No Claim to Orig. U.S. Govt. Works.

1574. MiTek presented no evidence 1991. All of these claims of copyright
to the contrary. properly were assigned to MiTek when it
acquired Aces. Id. at 1574. See also17
FN12. Version 1 of the ACES layout U.S.C. § 201(d).
program corresponds to claim of
copyright registration number TX-3- FN13. ArcE does not appeal the
175-806, effective November 6, district court's dismissal of its abuse
1991. This registration was later of process counterclaim. Thus, that
corrected by supplemental issue is not before us on appeal.
registration number TX-3-564-806,
effective September 3, 1993. The II. ISSUES ON APPEAL
supplemental registration was made
in order to correct the date of first On appeal, MiTek asserts that the district
publication, which originally was court erred in: (1) failing to separate
listed incorrectly as February 11, copyrightable expression in the ACES
1989. It was corrected to reflect the program from the program ideas, because it
correct date of publication, March failed to perform an abstraction under the
10, 1989. MiTek, 864 F.Supp. at 1474 AltaiFN14 abstraction-filtration-comparison
n. 2. test or failed to undertake a similar means of
Version 2 of the ACES program is analysis; (2) finding that the menu and
covered by claim of copyright registration submenu command tree structure in the
number TX-2-934-789, effective October ACES program is an uncopyrightable
3, 1990. This registration later was “process,” based on its failure to abstract;
corrected by supplemental registration (3) concluding that the menu and submenu
TX-3-175-804, effective November 6, command tree structure is an
1991. The supplemental registration was uncopyrightable “process” because of its
made in order to correct a spelling error erroneous finding of fact that the menu and
and to correct the date of first publication the submenu command tree structure of the
to September 26, 1990. The original ACES program mimics the way a draftsman
registration had been filed by Aces prior to draws such a layout by hand; (4) failing to
its acquisition by MiTek, and it consider the copyrightability of the ACES
misunderstood the term “date of program as a whole, including the
publication” to refer to the date of the combination of elements that themselves
publication of the first version of the may not be copyrightable; (5) applying the
program, not to the date of the publication wrong standard in comparing the programs
of the separate and derivative work. Id. at at issue in this case; and (6) finding that
n. 3. ArcE's copying of the copyrightable
elements of the ACES program was de
Version 3 of the ACES layout program minimis. We will address these issues in
corresponds to claim of copyright turn.
registration number TX-3-175-805,
effective November 6, 1991. The date of FN14.Computer Assocs. Int'l, Inc. v.
first publication is listed as March 13, Altai, Inc., 982 F.2d 693, 706-11 (2d
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Cir.1992). See also Bateman v. whether ArcE has copied constituent

Mnemonics, 79 F.3d 1532, 1543-46 elements of the ACES programs that are
(11th Cir.1996) (discussing and original. As the Tenth Circuit stated, “This
applying the Altai test). question involves two separate inquiries: 1)
whether the defendant, as a factual matter,
III. DISCUSSION copied portions of the plaintiff's program;
and 2) whether, as a mixed issue of fact and
A. Claims of Copyright Infringement law, those elements of the program that have
been copied are protected expression and of
[2] To establish copyright infringement, such importance to the copied work that the
MiTek must prove “(1) ownership of a valid appropriation is actionable.” Gates Rubber
copyright, and (2) copying of constituent Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823,
elements of the work that are original.” 832 (10th Cir.1993).
Feist Publications, Inc. v. Rural Tel. Serv.
Co., 499 U.S. 340, 361, 111 S.Ct. 1282, [3][4] As a factual matter, a proof of copying
1296, 113 L.Ed.2d 358 (1991); see also may be shown either by direct evidence, or,
Bateman v. Mnemonics, Inc., 79 F.3d 1532, in the absence of direct evidence, it may be
1541 (11th Cir.1996). To satisfy Feist 's first inferred from indirect evidence
prong, “plaintiff must prove that the work as demonstrating that the defendant had access
a *1554 whole is original and that the to the copyrighted work and that there are
plaintiff complied with applicable statutory probative similarities between the allegedly
formalities.” Lotus Dev. Corp. v. Borland infringing work and the copyrighted work.
Int'l, Inc., 49 F.3d 807, 813 (1st Cir.1995), Id.; see also Bateman, 79 F.3d at 1541. Even
aff'd by an equally divided Court, 516 U.S. if the court finds that the putative infringer
233, 116 S.Ct. 804, 133 L.Ed.2d 610 (1996). copied portions of the copyright owner's
The Copyright Act provides that “[i]n any program, that is not the end of the inquiry.
judicial proceedings the certificate of a Copyright infringement occurs only if one
registration made before or within five years copies protected elements of a copyrighted
after first publication of the work shall work; in other words, the portion of the
constitute prima facie evidence of the copyrighted work that is copied must
validity of the copyright and of the facts “satisfy the constitutional requirement of
stated in the certificate.” 17 U.S.C. § 410(c) originality as set forth in Article I, § 8, cl.
(1996). “Once the plaintiff produces a 8.” Bateman, 79 F.3d at 1542;see also Feist,
certificate of copyright, the burden shifts to 499 U.S. at 345-46, 111 S.Ct. at 1287-88
the defendant to demonstrate why the claim (noting that “[t]he sine qua non of copyright
of copyright is invalid.” Bateman, 79 F.3d at is originality,” as well as emphasizing that it
1541. is a “constitutional requirement”). As the
Court in Feist noted, “the mere fact that a
In this case, Feist 's first prong is not at work is copyrighted does not mean that
issue, because ArcE does not contest the every element of the work may be
validity of the copyright registrations for the protected.” Id. at 348, 111 S.Ct. at 1289.
three versions of the ACES program. What
is at issue is Feist 's second prong, namely [5] Significantly, the Copyright Act

© 2008 Thomson/West. No Claim to Orig. U.S. Govt. Works.

expressly states that: Under the Altai Abstraction-Filtration-
In no case does copyright protection for Comparison Test
an original work of authorship extend to
any idea, procedure, process, system, [7] MiTek asserts that, although the district
method of operation, concept, principle, court purported to apply the abstraction-
or discovery, regardless of the form in filtration-comparison test of Computer
which it is described, explained, Assocs. Int'l, Inc. v. Altai, Inc., 982 F.2d 693
illustrated, or embodied in such work. (2d Cir.1992), it failed not only to
understand the test but also to apply it
17 U.S.C. § 102(b) (1996) (emphasis properly. More specifically, MiTek argues
added). Thus, in order for a plaintiff to that the district court erred in finding that no
prevail on a claim of copyright abstraction or similar type of analysis was
infringement, the court must find not only necessary. This finding was based on the
that the portion of the work copied is district court's determination that since
original and thus protectable but also that MiTek had “identified 18 non-literal
“the copying of copyrighted material was so elements of its layout programs that it
extensive that it rendered the offending and contends are entitled to copyright protection
copyrighted works substantially similar.” and which Defendant infringed upon,” the
Lotus, 49 F.3d at 813. In this case, the key court would “limit its inquiry as to the
inquiry is determining whether the elements copyrightability of these 18 elements
of the program that allegedly were copied designated by the Plaintiff.” MiTek, 864
are original and hence protectable. F.Supp. at 1579. The district court concluded
that it did not need to undertake any
B. The District Court Opinion abstraction, since MiTek had done this for it.
Accordingly, the district court proceeded
[6] On appeal, the district court's directly to step two of the Altai test,
conclusions of law are reviewed de novo. filtration.
Worthington v. United States, 21 F.3d 399,
400 (11th Cir.1994). A district court's MiTek is correct in asserting that the district
findings of fact in a bench trial “shall not be court did not abstract further the list of
set aside unless clearly erroneous.” eighteen elements that MiTek presented as
Fed.R.Civ.P. 52(a). “A finding is clearly being expressive and original elements of
erroneous when the reviewing court, after the three versions of the ACES program.
assessing the evidence, ‘is left with [the] However, the district court did not err in
definite and firm conviction that a mistake failing to abstract further the features that
has been committed.’ ” Worthington, 21 F.3d MiTek presented to it in its Proposed
at 400 (quoting United States v. United Findings of Fact and Conclusions of Law as
States Gypsum Co., 333 U.S. 364, 395, 68 being “original at the time they were first
S.Ct. 525, 542, 92 L.Ed. 746 (1948)). incorporated into those versions of the
Applying these standards of review, we ACES Layout Program.” R2-104-10. During
examine seriatim the six issues presented. the bench trial, one of MiTek's experts was
questioned about an exhibit that he had
*1555 1. Failure to Perform an Abstraction prepared, which he stated contained the
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“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

© 2008 Thomson/West. No Claim to Orig. U.S. Govt. Works.

copying of the structure of a lead to a misreading of what the
computer program. In other words, court is trying to say. Therefore, in
there was no verbatim copying of the this case, we will attempt to be
source or object code (which would precise-we are dealing with the
be literal copying of a literal alleged nonliteral copying of
element), but rather, there were nonliteral elements (i.e., user
allegations of substantial similarity interfaces) of a computer program.
(i.e., nonliteral copying) of nonliteral
elements, namely parameter lists, 2. The Uncopyrightable Process of the
macros, and general flow charts. Id. ACES Menu and Submenu Command Tree
at 702. It is important to differentiate Structure
between both literal and nonliteral
copying, as well as between literal [11] MiTek also contends that the district
and nonliteral elements of a court, in failing to abstract the ACES
computer program. The latter use of program's menu FN17 and submenu command
the terms “literal” and “nonliteral” is tree structure, FN18 erred in concluding that it
as terms of art, whereas the former is is a “process” and thus foreclosed from
not. However, courts unfortunately copyright protection by 17 U.S.C. § 102(b).
often fail to distinguish between the Although the copyrightability of nonliteral
two, or simply mischaracterize what elements of a computer program is an issue
is at issue in a certain case. For of first impression for our circuit, basic
instance, the Lotus court stated that principles of copyright law guide us in
“[w]hile the Altai test may provide a addressing it.
useful framework for assessing the
alleged nonliteral copying of FN17. The district court noted that
computer code, we find it to be of “[a] ‘menu,’ in computer parlance, is
little help in assessing whether the a graphical user interface employed
literal copying of a menu command to store information or functions of
hierarchy constitutes copyright the computers in a place that is
infringement.” 49 F.3d at 815. The convenient to reach, but saves screen
problem with this statement is that space for other images.” 864 F.Supp.
the Altai test was designed to help at 1580 n. 11. In both the ACES and
assess nonliteral copying of a TrussPro programs, there are two
nonliteral element, not nonliteral separate menus of command choices,
copying of computer code (a literal one running across the top of the
element). While this slight screen and another running along the
misstatement had no effect on the right-hand side of the screen. A
ultimate outcome of Lotus (since it “submenu” is an additional set of
was a literal copying case, not a options that relates to a prior menu
nonliteral copying case), it is an selection.
example of how imprecise language
in computer copyright cases can FN18. A “command tree” or
create confusion and conceivably “command tree structure” informs
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the user, in a hierarchical fashion, of embodied in such work.” 17 U.S.C. §

the options available and also 102(b). Were we to grant copyright
interacts with the user in requesting protection to MiTek's user interface,
information from the user in order to which is nothing more than a
utilize the program. process, we would be affording
copyright protection to a process that
[12] The district court found that “the is the province of patent law. As the
method the Aces Layout Programs follow, Federal Circuit stated, “Patent and
including the menu and the sub-menu copyright laws protect distinct
command tree structure, is a process that is aspects of a computer program.”
not entitled to copyright protection.” 864 Atari Games Corp. v. Nintendo of
F.Supp. at 1580. The district court's America, Inc., 975 F.2d 832, 839
conclusion was based principally on its (Fed.Cir.1992). Patent law “provides
finding that “the means by which the Aces protection for the process or method
Layout Programs undertake their task of performed by a computer in
drafting roof truss planes mimic the steps a accordance with a program,”
draftsman would follow in designing a roof whereas copyright protects only “the
truss plan by hand.” Id. MiTek argues that expression of that process or
the district court's failure to abstract the method.” Id. If, however, the
ACES menu and submenu command tree patentable process and its expression
structure beyond the level at which MiTek are indistinguishable or inextricably
presented it to the district court led the court intertwined, then “the process
to conclude that it is unprotectable as a merges with the expression and
process. MiTek contends that an abstraction precludes copyright protection.” Id.
should have been performed by the court at 839-40. Such is the case with the
and that such an abstraction would have menu and the submenu command
discovered substantial protectable tree structure of the ACES program.
expression. FN19

*1557[13] The First Circuit recently

FN19. MiTek seems to addressed the issue of “[w]hether a
misapprehend the fundamental computer menu command hierarchy
principle of copyright law that constitutes copyrightable subject matter.”
copyright does not protect an idea, Lotus, 49 F.3d at 813. The Lotus court held
but only the expression of the idea. that “the Lotus menu command hierarchy is
The idea-expression dichotomy is an uncopyrightable ‘method of operation’ ”
clearly set forth in 17 U.S.C. § that provided “the means by which users
102(b), which by its express terms control and operate Lotus 1-2-3.” Id. at 815.
prohibits copyright protection for In reaching its conclusion, the First Circuit
“any idea, procedure, process, analogized the “buttons” that operate a
system, method of operation, computer program to those that operate a
concept, principle, or discovery, VCR, the latter being an obvious example of
regardless of the form in which it is a “method of operation.” Id. at 817. Unlike
described, explained, illustrated, or the Lotus court, we need not decide today

© 2008 Thomson/West. No Claim to Orig. U.S. Govt. Works.

whether a main menu and submenu doctrine prohibits such an
command tree structure is uncopyrightable appropriation. See Gates, 9 F.3d at
as a matter of law. We agree with the 838.
conclusion reached by the district court that
the ACES menu and submenu command tree [14][15] A related argument advanced by
structure is uncopyrightable under 17 U.S.C. MiTek is that the district court erred in
§ 102(b). MiTek's argument that the district characterizing the use of trapezoids in the
court erred in denying protection under 17 ACES program as a means of visually
U.S.C. § 102(b) is without merit.FN20 depicting planes. MiTek contends that the
trapezoids are used not to depict planes, but
FN20. Even were we to conclude rather to indicate to the program user that a
that section 102(b) does not prohibit pitched or sloping plane for a particular wall
the ACES main menu and submenu has been defined. MiTek states that “[a]s
command tree structure from being part of defining the shape of the roof using
entitled to copyright protection, the concept of intersecting planes, after all
MiTek would not prevail on this the walls are entered, and after information
issue. This feature of the ACES about each plane is entered for a particular
programs is unoriginal and not wall, a trapezoid shape surrounds the wall
entitled to copyright protection. The on the screen.” Brief of Appellants at 38.
look of the ACES program is MiTek contends that “the use of a trapezoid
basically industry standard for in this manner is a purely arbitrary,
computer aided-design (“CAD”) expressive feature.” Id. We are not certain
programs, with the menu bars that the district court misconstrued the
running across the top and the right, purpose behind the use of trapezoids,FN21 but,
and the large work area occupying even if it did, this use of trapezoids lacks
most of the screen. In addition, based sufficient originality to be entitled to
on the district court's conclusion that copyright protection.FN22
the ACES programs “mimic the steps
a draftsman would follow in FN21. The testimony of one of
designing a roof truss plan by hand,” MiTek's experts seems to contradict
a conclusion with which we find no the argument that it makes in its
fault, the structure of the menu and brief. Thomas Zgraggen, who
submenu command tree of the ACES prepared the list of 18 nonliteral
programs tracking that approach is elements that MiTek claims are
unoriginal and uncopyrightable. The protected by copyright, testified, on
logical design sequence is akin to a direct examination, in response to a
mathematical formula that may be question about the use of trapezoids
expressed in only a limited number in the program, that “[t]his is the
of ways; to grant copyright actual depiction of a defined plane.”
protection to the first person to R5-372. He also testified that “the
devise the formula effectively would program chose to actually follow a
remove that mathematical fact from more graphic method by showing a
the public domain. The merger trapezoid which actually
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encompasses the wall where that somewhat different design process. As a

plane has been defined.” Id. Given general matter, however, the idea of closely
this expert testimony by one of correlating the ACES program to the
MiTek's own witnesses, it is longhand steps taken by a draftsman was the
understandable that the court constraining force in the design of the menu
concluded that the trapezoids in the and submenu command tree structure. The
ACES programs were used to depict logic inherent in this step-by-step process
planes. If that is the case, then the renders the resulting program unoriginal in
district court properly applied the that such logic may be expressed in only a
merger doctrine to deny protection to limited number of ways. More than a minor
the use of trapezoids. departure from the logical sequence renders
the result unusable. Thus, the district court
FN22. Even were we to conclude did not err in concluding that this structure is
that this use of trapezoids is entitled not entitled to copyright protection.
to protection, ArcE's use of
trapezoids in its program would 4. Consideration of the Copyrightability of
constitute nothing more than the ACES Program as a Compilation
nonactionable de minimis copying.
[16] MiTek argues that the district court
3. Similarity of the ACES Program Structure gave short shrift to its contention that the
With the Way a Draftsman Draws a Truss selection, coordination, and arrangement
Layout by Hand embodied in the ACES program and its user
interfaces are entitled to compilation
Closely related to the menu and submenu copyright protection.FN23 It points out that the
command tree issue is MiTek's contention Supreme Court, in Feist, 499 U.S. at 359-60,
that the district court erred in concluding 111 S.Ct. at 1295, noted that a work
that the ACES program mimicked the steps comprised only of facts is copyrightable to
that a draftsman would take in drawing and the extent that such facts are selected,
*1558 designing a roof truss plan by hand. arranged, or organized (and thus presented)
See MiTek, 864 F.Supp. at 1580. MiTek in an original way. This protection is limited,
contends that its programs do not mimic the however, and extends only to the work as a
steps taken by a draftsman, because, inter whole, and only if the selection,
alia, a mouse is used, the walls are drawn in coordination, or arrangement is sufficiently
different colors, and a pop-up keypad is used original to be copyrightable.
on the screen to enter numeric information.
Appellants Brief at 33-38. We find that the FN23. The Copyright Act defines the
district court was not suggesting that the term compilation as “a work formed
ACES program was an exact correlation to by the collection and assembling of
the steps that a draftsman would take, given preexisting materials or of data that
the different media that are being used (i.e., are selected, coordinated, or
a computer as compared to a pen and paper). arranged in such a way that the
Constraints associated with computer resulting work as a whole constitutes
programs and computer design dictate a an original work of authorship.” 17

© 2008 Thomson/West. No Claim to Orig. U.S. Govt. Works.

U.S.C. § 101 (emphasis added). Microsoft Corp., 35 F.3d 1435, 1446 (9th
Cir.1994) (noting that, in the case of alleged
[17] We acknowledge that a user interface, infringement of a work as a whole (i.e., a
here a screen display (itself an audiovisual compilation), “there can be no *1559
work), may be entitled to copyright infringement unless the works are virtually
protection as a compilation. In order to identical”), cert. denied,513 U.S. 1184, 115
receive this protection, however, the S.Ct. 1176, 130 L.Ed.2d 1129 (1995);
compilation must be original and expressive. Harper House, Inc. v. Thomas Nelson, Inc.,
MiTek cites to Digital Communications 889 F.2d 197, 205 (9th Cir.1989) (stating
Assocs., Inc. v. Softklone Distrib. Corp., 659 that “[a]s with factual compilations,
F.Supp. 449, 463 (N.D.Ga.1987), as a case copyright infringement of compilations
in which a court concluded that “the status consisting of largely uncopyrightable
screen, which is a compilation, is elements should not be found in the absence
copyrightable to the extent of its of ‘bodily appropriation of expression’ ”)
arrangement and design of (citation omitted).
parameter/command terms.” Underlying this
holding, however, was the Softklone court's FN24. The terms “virtual
finding that the copyright holder's identicality” and “bodily
compilation met the requirements of 17 appropriation of expression” have
U.S.C. § 102, namely, that it was “(1) an been used synonymously, although
original work of authorship (2) fixed in a we prefer the former to the latter.
tangible medium from which it (3) can be Both terms convey a level of
perceived and (4) not an idea or necessary similarity greater than the
expression of an idea.” Id. Even this “substantial similarity” standard of
determination was not the end of the the Altai abstraction-filtration-
analysis in Softklone, for, once the court comparison test.
determined that the status screens were
protectable, it still compared the putative In analyzing MiTek's compilation claim, the
infringer's status screens to those of the district court applied the virtual identicality
copyright holder. Only after the court standard and concluded that “the visual
concluded that they were “virtually display of the Arc [E] program differs
identical” did it hold that the compilation sufficiently, if not substantially, from the
copyright in the status screens was Aces Layout Programs to preclude a finding
infringed. Id. at 465. of virtual identicality.” MiTek, 864 F.Supp.
at 1584. This conclusion was based in part
[18] This circuit has not established the on the fact that “[t]he Arc[E] Program
standard that should be used in analyzing depicts its commands as icons in the
claims of compilation copyright Windows environment, rather than as words
infringement of nonliteral elements of a in the Aces Layout Programs.” FN25Id.
computer program. Today, we join the Ninth Assuming without deciding that the
Circuit in adopting the “bodily appropriation nonliteral elements of the ACES user
of expression” or “virtual identicality” interface are a protectable compilation, we
standard.FN24See Apple Computer, Inc. v. agree with the district court that there is not
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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

© 2008 Thomson/West. No Claim to Orig. U.S. Govt. Works.

erred in concluding that the copying by as to be de minimis, and will not justify a
ArcE *1560 of the protectable elements of finding of substantial similarity.” FN26Id.
the ACES programs was de minimis and (footnote omitted). We agree with the
therefore not actionable. In its comparison district court that the elements that were
analysis, after concluding that, of the five considered original and appropriated were
protectable elements of the ACES programs, not of such significance to the overall
four in TrussPro were substantially similar, program to warrant an ultimate finding of
the district court concluded: substantial similarity and hence
A finding of a substantial similarity [of infringement. The burden is on the copyright
certain program elements] does not end owner to demonstrate the significance of the
the Court's inquiry, however. To find copied features, and, in this case, MiTek has
infringement, the Court must also failed to meet that burden.
determine that the Arc[E] Program has
appropriated substantial elements of the FN26.Nimmer, in using the term
Aces Layout Programs. The Court has “substantial similarity,” is referring
reviewed the programs and concludes that to the program as a whole, not
these five elements are not significant in constituent elements of the program.
the context of the Aces Layout Programs The district court concluded that, in
as a whole. TrussPro, four of the five protected
ACES elements were substantially
864 F.Supp. at 1584. Based on this finding, similar. However, its ultimate
the court concluded that the copying was de conclusion was that since these
minimis and not actionable. elements lacked significance in the
ACES program as a whole, the two
MiTek cites a scholarly treatise on copyright programs as a whole were not
law for the proposition that “even a substantially similar; therefore, there
quantitatively small amount of copied was no finding of infringement.
material may be sufficiently important to the
operation of plaintiff's program to justify a IV. CONCLUSION
finding of substantial similarity.” 3 Melville
B. Nimmer & David Nimmer, Nimmer on For the foregoing reasons, the district court's
Copyright § 13.03[F][5] at 13-146 (1996) judgment that the TrussPro program does
(footnote omitted) (hereinafter “Nimmer”). not infringe the ACES programs is
Certainly even a quantitatively small amount AFFIRMED.
of copied material may justify a finding of
substantial similarity, but, as Nimmer *1561 APPENDIX A (R3-144-Pl. Exh. 18C)
correctly observes, “[i]n some cases, the
amount of material copied will be so small
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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

© 2008 Thomson/West. No Claim to Orig. U.S. Govt. Works.