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August 13, 1991


Vaughn R. Walker, United States District Judge.

The opinion of the court was delivered by: WALKER


 Defendants Microsoft and Hewlett-Packard ("HP") move the court to reconsider its dismissal of defendants' affirmative defense that the elements of Apple's copyrighted works in suit are not sufficiently original to warrant copyright protection. In essence, defendants seek to use lack of originality of constituent elements as a means of eliminating those elements from the substantial similarity of expression analysis. Defendants rely heavily on dicta from Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 548, 85 L. Ed. 2d 588 , 105 S. Ct. 2218 , 225 U.S.P.Q. (BNA) 1073 (1985) and Feist Publications v. Rural Telephone Service Co., 113 L. Ed. 2d 358, 111 S. Ct. 1282, 18 U.S.P.Q.2D (BNA) 1275 (1991) for the proposition that the copyright laws do not prohibit subsequent copying of unoriginal constituent elements from a prior author's work. Defendants also cite two Second Circuit cases in which lack of originality of component elements limited the scope of copyright protection. In Silverman v. CBS, Inc., 870 F.2d 40, 9 U.S.P.Q.2D (BNA) 1778 (2d Cir. 1989), the court concluded that the scope of protection afforded by the copyrights in issue only extended to expression which was added to radio scripts which were in the public domain. In Folio Impressions, Inc. v. Byer California, 1991 U.S. LEXIS 14357 (2d Cir. June 27, 1991), the Second Circuit concluded that the lack of originality of an element of a copyrighted work required exclusion of that element from the substantial similarity of expression analysis.

 Defendants must show that the component features of Apple's works which are allegedly "unoriginal" have been directly copied from prior works. In other words, If Apple's expression of those component features is different from the expression of similar features in preexisting programs, then defendants have failed to establish that Apple's expression is "unoriginal."


 Consideration of the present motion has reawakened the court's concern with the apparent state of the law (especially in the Ninth Circuit) suggesting that elements of an allegedly infringed work which are found to be "unprotectible" must be eliminated from consideration in the substantial of expression analysis. The problem results from the ofttimes metaphysical line drawing between idea and expression by which courts rationalize their decisions. Shaw v. Lindheim, 908 F.2d 531, 15 U.S.P.Q.2D (BNA) 1516 (9th Cir. 1990); Sid & Marty Krofft Television v. McDonald's Corp., 562 F.2d 1157, 196 U.S.P.Q. (BNA) 97 (9th Cir. 1977) and Arnstein v. Porter, 154 F.2d 464, 68 U.S.P.Q. (BNA) 288 (2d Cir. 1946), cert. denied, 330 U.S. 851, 67 S. Ct. 1096, 91 L. Ed. 1294, 73 U.S.P.Q. (BNA) 550 (1947), demonstrate the difficulties which this dichotomy poses for even the most thoughtful judges. Removing unprotectible elements prior to the substantial similarity of expression test would preclude copyright protection for factual compilations containing an innovative selection or arrangement of elements because each element would be eliminated and nothing would be left for purposes of determining substantial similarity.

 For example, a defendant could argue that a plaintiff's musical composition is comprised of unprotectible musical notes which should be eliminated from the substantial similarity of expression analysis. Each individual note is unoriginal because not created by the composer. Alternatively, the defendant could argue that there is no other way to express the idea of a B-sharp note and, therefore, the "idea and expression" have merged. The problem with analytic dissection of copyrighted works is that carried to an extreme, it can preclude copyright protection for works which deserve protection in that they represent creative effort which the copyright laws seek to foster. Although HP contends that it is not urging the court to dissect features of Apple's works to such a trivial degree, the parties offer no comprehensible standard to ascertain how close a dissection is required to implement the copyright laws.

 Some dissection of elements and the application of merger, functionality, scenes a faire, and unoriginality theories are necessary to determine which elements can be used freely by the public in creating new works, so long as those works do not incorporate the same selection or arrangement as that of the plaintiff's work. Because there ought to be copyright protection for an innovative melding of elements from preexisting works, elements which have been deemed "unprotectible" should not be eliminated prior to the substantial similarity of expression analysis. Suppose defendant copied plaintiff's abstract painting composed entirely of geometric forms arranged in an original pattern. The alleged infringer could argue that each expressive element (i.e., the geometric forms) is unprotectible under the functionality, merger, scenes a faire, and unoriginality theories and, thus, all elements should be excluded prior to the substantial similarity of expression analysis. Then, there would be nothing left for purposes of determining substantial similarity of expression. In this example, elimination of "unprotectible" elements would result in a finding of no copyright infringement, which would be clearly inconsistent with the copyright law's purpose of providing incentives to authors of original works.

 Accordingly, the court concludes that even if elements are found "unprotectible," they should not be eliminated from the substantial similarity of expression analysis. Instead, if it is determined that the defendant used the unprotectible elements in an arrangement which is not substantially similar to the plaintiff's work, then no copyright infringement can be found. If, on the other hand, the works are deemed substantially similar, then copyright infringement will be established even though the copyrighted work is composed of unprotectible elements. There is simply no other logical way of protecting an innovative arrangement or "look and feel" of certain works.

 In the presentation of their respective positions, the court urges the parties to review and consider J. Wiley, "Copyright at the School of Patent," 58 U.Chi.L.Rev. 119 (1991). The author's effort to link copyright analysis to the underlying purpose of the law strikes the undersigned as an approach which might well afford a sound basis for decision of the substantial similarity issues presented here.


 The court notes the correspondence of the parties concerning Apple's revised Supplemental List of Similarities Regarding Windows 3.0 and NewWave 3.0: letter to the court from David T. McDonald, dated August 1; letter to the court from Chris R. Ottenweller, dated August 2. The clerk is directed to file these letters as part of the record herein. In accordance with the apparent understanding of the parties, Apple is given until August 15, 1991 to file its supplemental list.

 The court has received letters dated August 1 and 12 from Mr. Ottenweller, one of Apple's counsel, and letters dated August 6 and 8 from Mr. Marshall and Mr. McDonald, respectively, concerning a discovery dispute pertaining to interrogatories. In consideration of the complexity of this case, the court suspends the 35 interrogatory limit established by Local Rule 230-1(b). Each party shall be allowed a maximum of 350 interrogatories, including subparts. The court, however, admonishes the parties not to abuse this ...

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