Class 8: Literary Works

Introduction

Section 102 of the Copyright Act provides that copyright can only protect "original works of authorship." 17 U.S.C. § 102(a). In Class 3, Class 4, Class 5, and Class 6, we discussed the meaning of the term "originality." We learned that the originality requirement limits copyright protection to works that are independently created by an author and have some creative element, and that copyright cannot protect facts or ideas.

In the next several classes we will discuss the meaning of the term "works of authorship." We will learn about the different categories of works protected by copyright, and how copyright protects different categories of works in different ways. We will also consider how copyright protects works that include both useful and expressive elements.

Works of Authorship

Section 102 of the Copyright Act identifies eight categories of works of authorship:

Works of authorship include the following categories:
(1) literary works;
(2) musical works, including any accompanying words;
(3) dramatic works, including any accompanying music;
(4) pantomimes and choreographic works;
(5) pictorial, graphic, and sculptural works;
(6) motion pictures and other audiovisual works;
(7) sound recordings; and
(8) architectural works.

17 U.S.C. § 102(a).

In Class 7, we learned that copyright protects intangible works of authorship, not the material objects in which they are fixed. Accordingly, a work of authorship may be fixed in many different forms of media. For example, a novel may be fixed in a paperback book, an ebook, or a sound recording. Likewise, a musical work may be fixed in sheet music or in a sound recording. A choreographic work may be fixed in choreographic notation or in a motion picture. In any case, the medium in which a work is fixed does not affect the nature of the work itself.

Also, the different elements of a work of authorship may fit into different categories, and a single element may fit into more than one category. So, for example, the melody of a song is musical work, but the lyrics of a song are both a musical work and a literary work.

The category of an element of a work is important, because it may affect the particular rights granted to the owner of the work. For example, the owner of a literary work has a performance right, but the owner of a sound recording does not. 17 U.S.C. § 114(a).

Literary Works

Under Section 101 of the Copyright Act:

“Literary works” are works, other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material objects, such as books, periodicals, manuscripts, phonorecords, film, tapes, disks, or cards, in which they are embodied.

17 U.S.C. § 101.

So, a literary work is a work that consists of words or symbols of any kind, regardless of the medium in which they are expressed. "Literary" just means that the work consists of words or symbols, and does not imply any aesthetic judgment. William Faulker's novel As I Lay Dying is a literary work, but so is Rosey Grier's how-to book Needlepoint for Men, my lecture notes, and your grocery list.

However, some forms of literary works may not be protected by copyright.

For example, as we learned in Class 5, a compilation of facts is protected by copyright only if it includes an original element. The white-pages directory at issue in Feist v. Rural was a literary work, because it consisted of words and symbols, but it could not be protected by copyright, because it lacked originality. 499 U.S. 340 (1991).

Similarly, as we learned in Class 6 and Class 8, words, titles, and short phrases cannot be protected by copyright under the merger doctrine, because they are too close to ideas, Kern River Gas Transmission Co. v. Coastal Corporation, 899 F.2d 1458 (5th Cir. 1990), and include only a de minimis creative element.

Questions:

1. In about 1962, shortly before he died of rheumatic heart disease, American painter Franz Kline (1910-62) wrote a grocery list. Is it a literary work? Is it protected by copyright? Can it be?
    
   
   Franz Kline, Grocery List (c. 1962)
   
   
   
   Franz Kline, Painting Number 2 (1954)
2. In the 1960s, conceptual artists proposed that an artwork could consist of set of instructions. In particular, the Fluxus movement, led by the Lithuanian artist George Maciunas, produced many artworks in the form of instructional cards.
   
   
   
   George Brecht, Three Aqueous Events (1961)
   
   
   Yoko Ono, Blood Piece (1960)
3. Are these literary works? Are they protected by copyright? Can they be? 
4. In Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903), the Supreme Court stated, "The copy is the personal reaction of an individual upon nature. Personality always contains something unique. It expresses its singularity even in handwriting, and a very modest grade of art has in it something irreducible which is one man's alone. That something he may copyright unless there is a restriction in the words of the act." How does this affect your analysis of Kline's grocery list? The instruction artworks? 
5. In William Faulkner's novel Requiem for a Nun (1950), one of the characters says the immortal line, "The past is never dead. It's not even past." In Woody Allen's film Midnight in Paris (2011), Gil Pender (Owen Wilson) says, "The past is not dead! Actually, it's not even past. You know who said that? Faulkner. And he was right. And I met him, too. I ran into him at a dinner party." In 2012, the Faulkner estate filed a copyright infringement action against Sony Pictures Classics, the distributor of the film. The district court dismissed the action, based on fair use. Faulkner Literary Rights, LLC v Sony Pictures Classics, Inc., 3:2012cv00100 (N.D. Miss. July 18, 2013). Can copyright protect the quote? Should copyright protect the quote? Does it matter that the quote was inaccurate? Why?

Titles

Arguably, the title of a work is a "writing" that could satisfy the constitutional criteria for copyright. A title is a collection of words or symbols, and at least some titles could be independent works of authorship with a creative element. However, courts have universally held that "one cannot claim copyright in a title." See, e.g., Arthur Retlaw & Assoc. v. Travenol Laboratories, 582 F. Supp. 1010, 1014 (N.D. Ill. 1984). The Copyright Office agrees, taking the position that copyright cannot protect titles, individual words, or phrases, because they contain only a de minimis original element.

Questions:

1. Does the Intellectual Property Clause authorize Congress to grant copyright in titles?
2. In 1968, Charles and Ray Eames made a film titled, A Rough Sketch for a Proposed Film Dealing with the Powers of Ten and the Relative Size of Things in the Universe (1968). Can copyright protect the title of their film?
   
   

   
   

   Charles & Ray Eames
   A Rough Sketch for a Proposed Film Dealing with

   the Powers of Ten and the Relative Size of Things in the Universe (1968)
3. The shortest sentence in the King James Bible (1611) is "Jesus wept." If the King James Bible were written today, could copyright protect that sentence?
4. The poem Lines on the Antiquity of Microbes (early 20th Century), generally attributed to American poet Strickland Gillilan (1869–1954), reads as follows: "Fleas: / Adam / Had 'em." Can copyright protect this poem? What about its title?
5. Can any other form of intellectual property protect the title of a work?

Literary Characters

A "literary character" is a character described in a literary work. Essentially, it is a fictional character described in words, rather than in images or sounds. Courts have held that the name of a literary character may be protected by trademark or state unfair competition law, but not by copyright. See, e.g., DC Comics, Inc. v. Filmation Associates, 486 F. Supp. 1273, 1277 (1980). 

But what about the other elements of a literary character, like a character's qualities or behaviors? Some courts have held that copyright can protect the distinctive elements of a literary character. For example, in Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930), Judge Hand stated:

If Twelfth Night were copyrighted, it is quite possible that a second comer might so closely imitate Sir Toby Belch or Malvolio as to infringe, but it would not be enough that for one of his characters he cast a riotous knight who kept wassail to the discomfort of the household, or a vain and foppish steward who became amorous of his mistress. These would be no more than Shakespeare's "ideas" in the play, as little capable of monopoly as Einstein's Doctrine of Relativity, or Darwin's theory of the Origin of Species. It follows that the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.

In other words, according to Hand, copyright can protect a literary character only if it is sufficiently developed, and can protect only the distinctive elements of a character. Hand's explanation of the scope of copyright in literary characters is essentially a particular application of the idea/expression dichotomy. A generic character is analogous to an idea, and a fully developed character is analogous to the expression of a idea.

By contrast, in Warner Bros Pictures v. Columbia Broadcasting System, 216 F. 2d 945 (9th Cir. 1954), the court held that a contract assigning the rights in the Dashiell Hammett novel The Maltese Falcon did not convey a copyright in the novel's protagonist, private detective Sam Spade, because copyright cannot protect characters, among other reasons:

It is conceivable that the character really constitutes the story being told, but if the character is only the chessman in the game of telling the story he is not within the area of the protection afforded by the copyright.
. . .
We conclude that even if the Owners assigned their complete rights in the copyright to the Falcon, such assignment did not prevent the author from using the characters used therein, in other stories. The characters were vehicles for the story told, and the vehicles did not go with the sale of the story.

Id.

In other words, the court held that copyright can protect a character only if the character itself constitutes the story, rather than merely being a vehicle for telling the story. The court observed that authors often write sequels, using the same characters. If a contract conveying the copyright in a literary work also conveyed the copyright in all of its characters, authors could be prevented from writing sequels:

The practice of writers to compose sequels to stories is old, and the copyright statute, though amended several times, has never specifically mentioned the point. It does not appear that it has ever been adjudicated, although it is mentioned in Nichols v. Universal Pictures Corp., 2 Cir., 1930, 45 F.2d 119. If Congress had intended that the sale of the right to publish a copyrighted story would foreclose the author's use of its characters in subsequent works for the life of the copyright, it would seem Congress would have made specific provision therefor. Authors work for the love of their art no more than other professional people work in other lines of work for the love of it. There is the financial motive as well. The characters of an author's imagination and the art of his descriptive talent, like a painter's or like a person with his penmanship, are always limited and always fall into limited patterns. The restriction argued for is unreasonable, and would effect the very opposite of the statute's purpose which is to encourage the production of the arts.

Id.

Few courts have adopted the reasoning of Nichols, and many scholars have criticized it. Some have argued that the case was actually decided by the language of the contract, so the court's holding that copyright cannot protect literary characters per se is dicta.

Dashiell Hammett, The Maltese Falcon (1930)

Humphrey Bogart as Sam Spade in The Maltese Falcon (1941)

Questions:

1. Should copyright protect the distinctive elements of a literary character? If so, what counts as a distinctive element? What about a character that consists of generic elements, combined in a distinctive way? 
2. In Nichols, the court found that if copyright protected literary characters, authors could be prevented from writing sequels. Do you agree? If so, is it necessarily a problem? 
3. What if an author wants to sell the copyright in a character? Should an author be able to sell the exclusive right to use a literary character?

Computer Programs

Until recently, it was unclear whether copyright could protect computer programs as a form of literary work. While the 1976 Act did not explicitly provide that computer programs were a form of literary work, the legislative history stated that the definition of literary works included, "computer databases and computer programs, to the extent that they incorporate authorship in the programmer's expression of original ideas, as distinguished from the ideas themselves." H.R. Rep. No. 94-1476, at 54 (1976).

In 1980, Congress amended the Copyright Act and explicitly provided for copyright protection of computer programs. 94 Stat. 3028. Section 101 of the Copyright Act provides:

A “computer program” is a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.

17 U.S.C. § 101.  In other words, computer programs are defined as a kind of literary work, consisting of "statements or instructions." However, Section 117 provides that the scope of copyright in computer programs is limited in certain ways, primarily because of the need to make copies of computer programs in order to use them. 17 U.S.C. § 117.

Critics of protecting computer programs as literary works argue that they are useful articles, not works of authorship. Essentially, they argue that the purpose of a computer program is utilitarian, not expressive. They are intended to do work, not to be read. While the result produced by a computer program may be expressive and protected by copyright, the program itself is not. For example, in Class 7, we discussed Stern Electronics Inc. v. Kaufman, 669 F.2d 852 (2d Cir. 1982) and Williams Electronics Inc v. Artic International Inc., 685 F. 2d 870 (3d Cir. 1982), in which courts held that copyright could protect the audiovisual elements of a video game.

Questions:

1. If copyright can protect the results produced by a computer program, can it protect the underlying program as well? Should it?
2. What about computer programs that do not produce a result that can be protected by copyright? For example, what about a program that controls a thermostat?

Apple Computer, Inc. v. Franklin Computer Corporation, 714 F.2d 1240 (3d Cir. 1983)

Sloviter, Circuit Judge. 

I. Introduction 

Apple Computer, Inc. appeals from the district court’s denial of a motion to preliminarily enjoin Franklin Computer Corp. from infringing the copyrights Apple holds on fourteen computer programs.

* * *

In this case the district court denied the preliminary injunction, inter alia, because it had “some doubt as to the copyrightability of the programs.” Apple Computer, Inc. v. Franklin Computer Corp., 545 F. Supp. 812, 215 USPQ 935 (E.D. Pa. 1982). This legal ruling is fundamental to all future proceedings in this action and, as the parties and amici curiae seem to agree, has considerable significance to the computer services industry. Because we conclude that the district court proceeded under an erroneous view of the applicable law, we reverse the denial of the preliminary injunction and remand.

II. Facts and Procedural History 

Apple, one of the computer industry leaders, manufactures and markets personal computers (micro-computers), related peripheral equipment such as disk drives (peripherals), and computer programs (software). It presently manufactures Apple II computers and distributes over 150 programs. Apple has sold over 400,000 Apple II computers, employs approximately 3,000 people, and had annual sales of $335,000,000 for fiscal year 1981. One of the byproducts of Apple’s success is the independent development by third parties of numerous computer programs which are designed to run on the Apple II computer. 

Franklin, the defendant below, manufactures and sells the ACE 100 personal computer and at the time of the hearing employed about 75 people and had sold fewer than 1,000 computers. The ACE 100 was designed to be “Apple compatible,” so that peripheral equipment and software developed for use with the Apple II computer could be used in conjunction with the ACE 100. Franklin’s copying of Apple’s operating system computer programs in an effort to achieve such compatibility precipitated this suit. 

Like all computers both the Apple II and ACE 100 have a central processing unit (CPU) which is the integrated circuit that executes programs. In lay terms, the CPU does the work it is instructed to do. Those instructions are contained on computer programs. 

There are three levels of computer language in which computer programs may be written. 

High level language, such as the commonly used BASIC or FORTRAN, uses English words and symbols, and is relatively easy to learn and understand (e.g., “GO TO 40” tells the computer to skip intervening steps and go to the step at line 40). A somewhat lower level language is assembly language, which consists of alphanumeric labels (e.g., “ADC” means “add with carry”). Statements in high level language, and apparently also statements in assembly language, are referred to as written in “source code.” The third, or lowest level computer language, is machine language, a binary language using two symbols, 0 and 1, to indicate an open or closed switch (e.g., “01101001” means, to the Apple, add two numbers and save the result). Statements in machine language are referred to as written in “object code.”

The CPU can only follow instructions written in object code. However, programs are usually written in source code which is more intelligible to humans. Programs written in source code can be converted or translated by a “compiler” program into object code for use by the computer. Programs are generally distributed only in their object code version stored on a memory device. 

A computer program can be stored or fixed on a variety of memory devices, two of which are of particular relevance for this case. The ROM (Read Only Memory) is an internal permanent memory device consisting of a semi-conductor “chip” which is incorporated into the circuitry of the computer. A program in object code is embedded on a ROM before it is incorporated in the computer. Information stored on a ROM can only be read, not erased or rewritten. The ACE 100 apparently contains EPROMS (Erasable Programmable Read Only Memory) on which the stored information can be erased and the chip reprogrammed, but the district court found that for purposes of this proceeding, the difference between ROMs and EPROMs is inconsequential. 545 F. Supp. at 813 n.3, 215 USPQ 935, 938 n.3. The other device used for storing the programs at issue is a diskette or “floppy disk”, an auxiliary memory device consisting of a flexible magnetic disk resembling a phonograph record, which can be inserted into the computer and from which data or instructions can be read. 

Computer programs can be categorized by function as either application programs or operating system programs. Application programs usually perform a specific task for the computer user, such as word processing, checkbook balancing, or playing a game. In contrast, operating system programs generally manage the internal functions of the computer or facilitate use of application programs. The parties agree that the fourteen computer programs at issue in this suit are operating system programs. 

Apple filed suit in the United States District Court for the Eastern District of Pennsylvania pursuant to 28 U.S.C. §1338 on May 12, 1982, alleging that Franklin was liable for copyright infringement of the fourteen computer programs, patent infringement, unfair competition, and misappropriation. Franklin’s answer in respect to the copyright counts included the affirmative defense that the programs contained no copyrightable subject matter. Franklin counterclaimed for declaratory judgment that the copyright registrations were invalid and unenforceable, and sought affirmative relief on the basis of Apple’s alleged misuse. Franklin also moved to dismiss eleven of the fourteen copyright infringement counts on the ground that Apple failed to comply with the procedural requirements for suit under 17 U.S.C. §§410, 411. 

After expedited discovery, Apple moved for a preliminary injunction to restrain Franklin from using, copying, selling, or infringing Apple’s copyrights. The district court held a three day evidentiary hearing limited to the copyright infringement claims. Apple produced evidence at the hearing in the form of affidavits and testimony that programs sold by Franklin in conjunction with its ACE 100 computer were virtually identical with those covered by the fourteen Apple copyrights. The variations that did exist were minor, consisting merely of such things as deletion of reference to Apple or its copyright notice. James Huston, an Apple systems programmer, concluded that the Franklin programs were “unquestionably copied from Apple and could not have been independently created.” He reached this conclusion not only because it is “almost impossible for so many lines of code” to be identically written, but also because his name, which he had embedded in one program (Master Create), and the word “Applesoft”, which was embedded in another (DOS 3.3), appeared on the Franklin master disk. Apple estimated the “works in suit” took 46 man-months to produce at a cost of over $740,000, not including the time or cost of creating or acquiring earlier versions of the programs or the expense of marketing the programs. 

Franklin did not dispute that it copied the Apple programs. Its witness admitted copying each of the works in suit from the Apple programs. Its factual defense was directed to its contention that it was not feasible for Franklin to write its own operating system programs. David McWherter, now Franklin’s vice-president of engineering, testified he spent 30-40 hours in November 1981 making a study to determine if it was feasible for Franklin to write its own autostart ROM program and concluded it was not because “there were just too many entry points in relationship to the number of instructions in the program.” Entry points at specific locations in the program can be used by programmers to mesh their application programs with the operating system program. McWherter concluded that use of the identical signals was necessary in order to ensure 100% compatibility with application programs created to run on the Apple computer. He admitted that he never attempted to rewrite Autostart ROM and conceded that some of the works in suit (i.e., Copy, Copy A, Master Create, and Hello) probably could have been rewritten by Franklin. Franklin made no attempt to rewrite any of the programs prior to the lawsuit except for Copy, although McWherter testified that Franklin was “in the process of redesigning” some of the Apple programs and that “[w]e had a fair degree of certainty that that would probably work.” Apple introduced evidence that Franklin could have rewritten programs, including the Autostart ROM program, and that there are in existence operating programs written by third parties which are compatible with Apple II. 

Franklin’s principal defense at the preliminary injunction hearing and before us is primarily a legal one, directed to its contention that the Apple operating system programs are not capable of copyright protection. 

The district court denied the motion for preliminary injunction by order and opinion dated July 30, 1982. Apple moved for reconsideration in light of this court’s decision in Williams Electronics, Inc. v. Artic International, Inc., 685 F.2d 870, 215 USPQ 405 (3d Cir. 1982), which was decided August 2, 1982, three days after the district court decision. The district court denied the motion for reconsideration. We have jurisdiction of Apple’s appeal pursuant to 28 U.S.C. §1292(a)(1). 

III. The District Court Opinion

* * * 

We read the district court opinion as presenting the following legal issues: (1) whether copyright can exist in a computer program expressed in object code, (2) whether copyright can exist in a computer program embedded on a ROM, (3) whether copyright can exist in an operating system program, and (4) whether independent irreparable harm must be shown for a preliminary injunction in copyright infringement actions. 

IV. Discussion

A. Copyrightability of a Computer Program Expressed in Object Code 

Certain statements by the district court suggest that programs expressed in object code, as distinguished from source code, may not be the proper subject of copyright. We find no basis in the statute for any such concern. Furthermore, our decision in Williams Electronics, Inc. v. Artic International, Inc., supra, laid to rest many of the doubts expressed by the district court. 

In 1976, after considerable study, Congress enacted a new copyright law to replace that which had governed since 1909. Act of October 19, 1976, Pub. L. No. 94-553, 90 Stat. 2541 (codified at 17 U.S.C. §§101 et seq.). Under the law, two primary requirements must be satisfied in order for a work to constitute copyrightable subject matter – it must be an “original wor[k] of authorship” and must be “fixed in [a] tangible medium of expression.” 17 U.S.C. §102(a). The statute provides: 

(a) Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. 

Id. The statute enumerates seven categories under “works of authorship” including “literary works”, defined as follows: 

“Literary works” are works, other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material objects, such as books, periodicals, manuscripts, phonorecords, film, tapes, disks, or cards, in which they are embodied. 

17 U.S.C. §101. A work is “fixed” in a tangible medium of expression when: 

its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. A work consisting of sounds, images, or both, that are being transmitted, is “fixed” for purposes of this title if a fixation of the work is being made simultaneously with its transmission. 

Id. 

Although section 102(a) does not expressly list computer programs as works of authorship, the legislative history suggests that programs were considered copyrightable as literary works. See H.R. Rep. No. 1476, 94th Cong., 2d Sess. 54, reprinted in 1976 U.S. Code Cong. & Ad. News 5659, 5667 (“literary works’ * * * includes * * * computer programs”). Because a Commission on New Technological Uses (“CONTU”) had been created by Congress to study, inter alia, computer uses of copyrighted works, Pub. L. No. 93-573, §201, 88 Stat. 1873 (1974), Congress enacted a status quo provision, section 117, in the 1976 Act concerning such computer uses pending the CONTU report and recommendations. 

The CONTU Final Report recommended that the copyright law be amended, inter alia, “to make it explicit that computer programs, to the extent that they embody an author’s original creation, are proper subject matter of copyright.” National Commission on New Technological Uses of Copyrighted Works, Final Report 1 (1979) [hereinafter CONTU Report]. CONTU recommended two changes relevant here: that section 117, the status quo provision, be repealed and replaced with a section limiting exclusive rights in computer programs so as “to ensure that rightful possessors of copies of computer programs may use or adapt these copies for their use,” id.; and that a definition of computer program be added to section 101. Id. at 12. Congress adopted both changes. Act of Dec. 12, 1980, Pub. L. No. 96-517, §10, 94 Stat. 3015, 3028. The revisions embodied CONTU’s recommendations to clarify the law of copyright of computer software. H.R. Rep. No. 1307, 96th Cong., 2d Sess. 23, reprinted in 1980 U.S. Code Cong. & Ad. News 6460, 6482. 

The 1980 amendments added a definition of a computer program: 

A “computer program” is a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result. 

17 U.S.C. §101. The amendments also substituted a new section 117 which provides that “it is not an infringement for the owner of a copy of a computer program to make or authorize the making of another copy or adaptation of that computer program” when necessary to “the utilization of the computer program” or “for archival purposes only.” 17 U.S.C. §117. The parties agree that this section is not implicated in the instant law suit. The language of the provision, however, by carving out an exception to the normal proscriptions against copying, clearly indicates that programs are copyrightable and are otherwise afforded copyright protection. 

We considered the issue of copyright protection for a computer program in Williams Electronics, Inc. v. Artic International, Inc., and concluded that “the copyrightability of computer programs is firmly established after the 1980 amendment to the Copyright Act.” 685 F.2d at 875, 215 USPQ at 409. At issue in Williams were not only two audiovisual copyrights to the “attract” and “play” modes of a video game, but also the computer program which was expressed in object code embodied in ROM and which controlled the sights and sounds of the game. Defendant there had argued “that when the issue is the copyright on a computer program, a distinction must be drawn between the ‘source code’ version of a computer program, which * * * can be afforded copyright protection, and the ‘object code’ stage, which * * * cannot be so protected,” an argument we rejected. Id. at 876, 215 USPQ at 409. 

The district court here questioned whether copyright was to be limited to works “designed to be ‘read’ by a human reader [as distinguished from] read by an expert with a microscope and patience”, 545 F. Supp. at 821, 215 USPQ at 944. The suggestion that copyrightability depends on a communicative function to individuals stems from the early decision of White-Smith Music Publishing Co. v. Apollo Co., 209 U.S. 1 (1908), which held a piano roll was not a copy of the musical composition because it was not in a form others, except perhaps for a very expert few, could perceive. See 1 Nimmer on Copyright §2.03[B][1] (1983). However, it is clear from the language of the 1976 Act and its legislative history that it was intended to obliterate distinctions engendered by White-Smith. H.R. Rep. No. 1476, supra, at 52, reprinted in 1976 U.S. Code Cong. & Ad. News at 5665. 

Under the statute, copyright extends to works in any tangible means of expression “ from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.’” 17 U.S.C. §102(a) (emphasis added). Further, the definition of “computer program” adopted by Congress in the 1980 amendments is “sets of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.” 17 U.S.C. §101 (emphasis added). As source code instructions must be translated into object code before the computer can act upon them, only instructions expressed in object code can be used “directly” by the computer. See Midway Manufacturing Co. v. Strohon, No. 82 C 1305, slip op. at 25-26, 219 USPQ 42, 50 (N.D. Ill. June 1, 1983). This definition was adopted following the CONTU Report in which the majority clearly took the position that object codes are proper subjects of copyright. See CONTU Report at 21. The majority’s conclusion was reached although confronted by a dissent based upon the theory that the “machine-control phase” of a program is not directed at a human audience. See CONTU Report at 28-30 (dissent of Commissioner Hersey).
The defendant in Williams had also argued that a copyrightable work “must be intelligible to human beings and must be intended as a medium of communication to human beings,” id. at 876-77, 215 USPQ at 409. We reiterate the statement we made in Williams when we rejected that argument: “[t]he answer to defendant’s contention is in the words of the statute itself.” 685 F.2d at 877, 215 USPQ at 410. 

The district court also expressed uncertainty as to whether a computer program in object code could be classified as a “literary work.” However, the category of “literary works”, one of the seven copyrightable categories, is not confined to literature in the nature of Hemingway’s For Whom the Bell Tolls. The definition of “literary works” in section 101 includes expression not only in words but also “numbers, or other * * * numerical symbols or indicia”, thereby expanding the common usage of “literary works.” Cf. Harcourt, Brace & World, Inc. v. Graphic Controls Corp., 329 F. Supp. 517, 523-24, 171 USPQ 219, 223-224 (S.D.N.Y. 1971) (the symbols designating questions or response spaces on exam answer sheets held to be copyrightable “writings” under 1909 Act); Reiss v. National Quotation Bureau, Inc., 276 F. 717 (S.D.N.Y. 1921) (code book of coined words designed for cable use copyrightable). Thus a computer program, whether in object code or source code, is a “literary work” and is protected from unauthorized copying, whether from its object or source code version. Accord Midway Mfg. Co. v. Strohon, slip op. at 25-27, 219 USPQ at 50; see also GCA Corp. v. Chance, 217 USPQ at 719. 

B. Copyrightability of a Computer Program Embedded on a ROM 

Just as the district court’s suggestion of a distinction between source code and object code was rejected by our opinion in Williams issued three days after the district court opinion, so also was its suggestion that embodiment of a computer program on a ROM, as distinguished from in a traditional writing, detracts from its copyrightability. In Williams we rejected the argument that “a computer program is not infringed when the program is loaded into electronic memory devices (ROMs) and used to control the activity of machines.” 685 F.2d at 876, 215 USPQ at 409. Defendant there had argued that there can be no copyright protection for the ROMs because they are utilitarian objects or machine parts. We held that the statutory requirement of “fixation”, the manner in which the issue arises, is satisfied through the embodiment of the expression in the ROM devices. Id. at 874, 876, 215 USPQ at 408; See also Midway Mfg. Co. v. Strohon, slip op. at 27-30, 219 USPQ at 51; Tandy Corp. v. Personal Micro Computers, Inc., 524 F. Supp. at 173, 214 USPQ at 179; cf. Stern Electronics, Inc. v. Kaufman, 669 F.2d 852, 855-56, 213 USPQ 443, 445-446 (2d Cir. 1982) (audiovisual display of video game “fixed” in ROM). 

Therefore we reaffirm that a computer program in object code embedded in a ROM chip is an appropriate subject of copyright. See also Note, Copyright Protection of Computer Program Object Code, 96 Harv. L. Rev. 1723 (1983); Note, Copyright Protection for Computer Programs in Read Only Memory Chips, 11 Hofstra L. Rev. 329 (1982). 

C. Copyrightability of Computer Operating System Programs 

We turn to the heart of Franklin’s position on appeal which is that computer operating system programs, as distinguished from application programs, are not the proper subject of copyright “regardless of the language or medium in which they are fixed.” Brief of Appellee at 15 (emphasis deleted). Apple suggests that this issue too is foreclosed by our Williams decision because some portion of the program at issue there was in effect an operating system program. Franklin is correct that this was not an issue raised by the parties in Williams and it was not considered by the court. Thus we consider it as a matter of first impression. 

Franklin contends that operating system programs are per se excluded from copyright protection under the express terms of section 102(b) of the Copyright Act, and under the precedent and underlying principles of Baker v. Selden, 101 U.S. 99 (1879). These separate grounds have substantial analytic overlap. 

In Baker v. Selden, plaintiff’s testator held a copyright on a book explaining a bookkeeping system which included blank forms with ruled lines and headings designed for use with that system. Plaintiff sued for copyright infringement on the basis of defendant’s publication of a book containing a different arrangement of the columns and different headings, but which used a similar plan so far as results were concerned. The Court, in reversing the decree for the plaintiff, concluded that blank account-books were not the subject of copyright and that “the mere copyright of Selden’s book did not confer upon him the exclusive right to make and use account-books, ruled and arranged as designated by him and described and illustrated in said book.” Id. at 107. The Court stated that copyright of the books did not give the plaintiff the exclusive right to use the system explained in the books, noting, for example, that “copyright of a work on mathematical science cannot give to the author an exclusive right to the methods of operation which he propounds.” Id. at 103. 

Franklin reads Baker v. Selden as “stand[ing] for several fundamental principles, each presenting * * * an insuperable obstacle to the copyrightability of Apple’s operating systems.” It states: 

First, Baker teaches that use of a system itself does not infringe a copyright on the description of the system. Second, Baker enunciates the rule that copyright does not extend to purely utilitarian works. Finally, Baker emphasizes that the copyright laws may not be used to obtain and hold a monopoly over an idea. In so doing, Baker highlights the principal difference between the copyright and patent laws – a difference that is highly pertinent in this case. 

Brief of Appellee at 22. 

Section 102(b) of the Copyright Act, the other ground on which Franklin relies, appeared first in the 1976 version, long after the decision in Baker v. Selden. It provides: 

In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work. 

It is apparent that section 102(b) codifies a substantial part of the holding and dictum of Baker v. Selden. See 1 Nimmer on Copyright §2.18[D], at 2-207. 

We turn to consider the two principal points of Franklin’s argument. 

1. “Process”, “System” or “Method of Operation” 

Franklin argues that an operating system program is either a “process”, “system”, or “method of operation” and hence uncopyrightable. Franklin correctly notes that underlying section 102(b) and many of the statements for which Baker v. Selden is cited is the distinction which must be made between property subject to the patent law, which protects discoveries, and that subject to copyright law, which protects the writings describing such discoveries. However, Franklin’s argument misapplies that distinction in this case. Apple does not seek to copyright the method which instructs the computer to perform its operating functions but only the instructions themselves. The method would be protected, if at all, by the patent law, an issue as yet unresolved. See Diamond v. Diehr, 450 U.S. 175 (1981). 

Franklin’s attack on operating system programs as “methods” or “processes” seems inconsistent with its concession that application programs are an appropriate subject of copyright. Both types of programs instruct the computer to do something. Therefore, it should make no difference for purposes of section 102(b) whether these instructions tell the computer to help prepare an income tax return (the task of an application program) or to translate a high level language program from source code into its binary language object code form (the task of an operating system program such as “Applesoft”, see note 4 supra). Since it is only the instructions which are protected, a “process” is no more involved because the instructions in an operating system program may be used to activate the operation of the computer than it would be if instructions were written in ordinary English in a manual which described the necessary steps to activate an intricate complicated machine. There is, therefore, no reason to afford any less copyright protection to the instructions in an operating system program than to the instructions in an application program. 

Franklin’s argument, receptively treated by the district court, that an operating system program is part of a machine mistakenly focuses on the physical characteristics of the instructions. But the medium is not the message. We have already considered and rejected aspects of this contention in the discussion of object code and ROM. The mere fact that the operating system program may be etched on a ROM does not make the program either a machine, part of a machine or its equivalent. Furthermore, as one of Franklin’s witnesses testified, an operating system does not have to be permanently in the machine in ROM, but it may be on some other medium, such as a diskette or magnetic tape, where it could be readily transferred into the temporary memory space of the computer. In fact, some of the operating systems at issue were on diskette. As the CONTU majority stated: 

Programs should no more be considered machine parts than videotapes should be considered parts of projectors or phonorecords parts of sound reproduction equipment. * * * That the words of a program are used ultimately in the implementation of a process should in no way affect their copyrightability. 

CONTU Report at 21. 

Franklin also argues that the operating systems cannot be copyrighted because they are “purely utilitarian works” and that Apple is seeking to block the use of the art embodied in its operating systems. This argument stems from the following dictum in Baker v. Selden: 

The very object of publishing a book on science or the useful arts is to communicate to the world the useful knowledge which it contains. But this object would be frustrated if the knowledge could not be used without incurring the guilt of piracy of the book. And where the art it teaches cannot be used without employing the methods and diagrams used to illustrate the book, or such as are similar to them, such methods and diagrams are to be considered as necessary incidents to the art, and given therewith to the public; not given for the purpose of publication in other works explanatory of the art, but for the purpose of practical application. 

101 U.S. at 103. We cannot accept the expansive reading given to this language by some courts, see, e.g., Taylor Instrument Companies v. Fawley-Brost Co., 139 F.2d 989, 59 USPQ 384 (7th Cir. 1943), cert. denied, 321 U.S. 785, 60 USPQ 579 (1944). In this respect we agree with the views expressed by Professor Nimmer in his treatise. See 1 Nimmer on Copyright §2.18[C]. 

Although a literal construction of this language could support Franklin’s reading that precludes copyrightability if the copyright work is put to a utilitarian use, that interpretation has been rejected by a later Supreme Court decision. In Mazer v. Stein, 347 U.S. 201, 218, 100 USPQ 325 (1954), the Court stated: “We find nothing in the copyright statute to support the argument that the intended use or use in industry of an article eligible for copyright bars or invalidates its registration. We do not read such a limitation into the copyright law.” Id. at 218, 100 USPQ at 333. The CONTU majority also rejected the expansive view some courts have given Baker v. Selden, and stated, “That the words of program are used ultimately in the implementation of a process should in no way affect their copyrightability.” Id. at 21. It referred to “copyright practice past and present, which recognizes copyright protection for a work of authorship regardless of the uses to which it may be put.” Id. The Commission continued: “The copyright status of the written rules for a game or a system for the operation of a machine is unaffected by the fact that those rules direct the actions of those who play the game or carry out the process.’” Id. (emphasis added). As we previously noted, we can consider the CONTU Report as accepted by Congress since Congress wrote into the law the majority’s recommendations almost verbatim. See 18 Cong. Rec. H10767 (daily ed. Nov. 17, 1980) (Rep. Kastenmeier: Bill “eliminates confusion about the legal status of computer software by enacting the recommendations of [CONTU] clarifying the law of copyright of computer software”); 18 Cong. Rec. S14766 (daily ed. Nov. 20, 1980) (Sen. Bayh: “[t]his language reflects that proposed by [CONTU”]). 

Perhaps the most convincing item leading us to reject Franklin’s argument is that the statutory definition of a computer program as a set of instructions to be used in a computer in order to bring about a certain result, 17 U.S.C. §101, makes no distinction between application programs and operating programs. Franklin can point to no decision which adopts the distinction it seeks to make. In the one other reported case to have considered it, Apple Computer, Inc. v. Formula International, Inc., 562 F. Supp. 775, 218 USPQ 47 (C.D. Cal. 1983), the court reached the same conclusion which we do, i.e. that an operating system program is not per se precluded from copyright. It stated, “There is nothing in any of the statutory terms which suggest a different result for different types of computer programs based upon the function they serve within the machine.” Id. at 780, 218 at 51. Other courts have also upheld the copyrightability of operating programs without discussion of this issue. See Tandy Corp. v. Personal Micro Computers, Inc., 524 F. Supp. at 173, 214 USPQ at 179 (input-output routine stored in ROM which translated input into machine language in a similar fashion as Applesoft and Apple Integer Basic proper subject of copyright); GCA Corp. v. Chance, 217 USPQ at 719 (object code version of registered source code version of operating programs is the same work and protected). 

2. Idea/Expression Dichotomy 

Franklin’s other challenge to copyright of operating system programs relies on the line which is drawn between ideas and their expression. Baker v. Selden remains a benchmark in the law of copyright for the reading given it in Mazer v. Stein, supra, where the Court stated, “Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea – not the idea itself.” 347 U.S. at 217, 100 USPQ 333 (footnote omitted). 

The expression/idea dichotomy is now expressly recognized in section 102(b) which precludes copyright for “any idea.” This provision was not intended to enlarge or contract the scope of copyright protection but “to restate * * * that the basic dichotomy between expression and idea remains unchanged.” H.R. Rep. No. 1476, supra, at 57, reprinted in 1976 U.S. Code Cong. & Ad. News at 5670. The legislative history indicates that section 102(b) was intended “to make clear that the expression adopted by the programmer is the copyrightable element in a computer program, and that the actual processes or methods embodied in the program are not within the scope of the copyright law.” Id. 

Many of the courts which have sought to draw the line between an idea and expression have found difficulty in articulating where it falls. See, e.g., Nichols v. Universal Pictures Corp., 45 F.2d 119, 121, 7 USPQ 84, 86 (2d Cir. 1930) (L. Hand, J.); see discussion in 3 Nimmer on Copyright §13.03[A]. We believe that in the context before us, a program for an operating system, the line must be a pragmatic one, which also keeps in consideration “the preservation of the balance between competition and protection reflected in the patent and copyright laws”. Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742, 170 USPQ 557, 559 (9th Cir. 1971). As we stated in Franklin Mint Corp. v. National Wildlife Art Exchange, Inc., 575 F.2d 62, 64, 197 USPQ 721, 723 (3d Cir.), cert. denied, 439 U.S. 880, 199 USPQ 57 (1978), “Unlike a patent, a copyright protects originality rather than novelty or invention.” In that opinion, we quoted approvingly the following passage from Dymow v. Bolton, 11 F.2d 690, 691 (2d Cir. 1926). 

Just as a patent affords protection only to the means of reducing an inventive idea to practice, so the copyright law protects the means of expressing an idea; and it is as near the whole truth as generalization can usually reach that, if the same idea can be expressed in a plurality of totally different manners, a plurality of copyrights may result, and no infringement will exist. 

(emphasis added). 

We adopt the suggestion in the above language and thus focus on whether the idea is capable of various modes of expression. If other programs can be written or created which perform the same function as an Apple’s operating system program, then that program is an expression of the idea and hence copyrightable. In essence, this inquiry is no different than that made to determine whether the expression and idea have merged, which has been stated to occur where there are no or few other ways of expressing a particular idea. See, e.g., Morrissey v. Procter & Gamble Co., 379 F.2d 675, 678-79, 154 USPQ 193, 194-95 (1st Cir. 1967); Freedman v. Grolier Enterprises, Inc., 179 USPQ 476, 478 (S.D.N.Y. 1973) (“[c]opyright protection will not be given to a form of expression necessarily dictated by the underlying subject matter”); CONTU Report at 20. 

The district court made no findings as to whether some or all of Apple’s operating programs represent the only means of expression of the idea underlying them. Although there seems to be a concession by Franklin that at least some of the programs can be rewritten, we do not believe that the record on that issue is so clear that it can be decided at the appellate level. Therefore, if the issue is pressed on remand, the necessary finding can be made at that time. 

Franklin claims that whether or not the programs can be rewritten, there are a limited “number of ways to arrange operating systems to enable a computer to run the vast body of Apple-compatible software,” Brief of Appellee at 20. This claim has no pertinence to either the idea/expression dichotomy or merger. The idea which may merge with the expression, thus making the copyright unavailable, is the idea which is the subject of the expression. The idea of one of the operating system programs is, for example, how to translate source code into object code. If other methods of expressing that idea are not foreclosed as a practical matter, then there is no merger. Franklin may wish to achieve total compatibility with independently developed application programs written for the Apple II, but that is a commercial and competitive objective which does not enter into the somewhat metaphysical issue of whether particular ideas and expressions have merged. 

In summary, Franklin’s contentions that operating system programs are per se not copyrightable is unpersuasive. The other courts before whom this issue has been raised have rejected the distinction. Neither the CONTU majority nor Congress made a distinction between operating and application programs. We believe that the 1980 amendments reflect Congress’ receptivity to new technology and its desire to encourage, through the copyright laws, continued imagination and creativity in computer programming. Since we believe that the district court’s decision on the preliminary injunction was, to a large part, influenced by an erroneous view of the availability of copyright for operating system programs and unnecessary concerns about object code and ROMs, we must reverse the denial of the preliminary injunction and remand for reconsideration.

* * * 

V. 

For the reasons set forth in this opinion, we will reverse the denial of the preliminary injunction and remand to the district court for further proceedings in accordance herewith.

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Questions:

1. Apple v. Franklin is often described as holding that copyright can protect computer programs. But the question presented to the court was more specific. Franklin did not copy the source code of the Apple operating system, but the object code embedded in the ROM of the Apple computer. So the court held that copyright protects the object code of a computer operating system embedded in a ROM chip. Do you agree? Can copyright protect object code as well as source code? Should it? Can it protect operating systems as well as applications? Should it? Can it protect computer programs in ROM as well as RAM? Should it? Which doctrines are implicated by each of these questions?
2. The court held that copyright protection of the object code of the Apple operating system was consistent with Baker v. Selden. Do you agree?
3. The court held that a computer operating system is not a "process," “system," "method of operation," or "purely utilitarian work," because "the statutory definition of a computer program as a set of instructions to be used in a computer in order to bring about a certain result . . . makes no distinction between application programs and operating programs." Do you find this convincing? Did Baker v. Selden interpret the statutory or constitutional scope of copyright?
4. The court held that copyright protection of the Apple operating system was consistent with the idea/expression dichotomy because there is more than one way of expressing an operating system in a computer program, and "Apple does not seek to copyright the method which instructs the computer to perform its operating functions but only the instructions themselves." Do you find this convincing? Is it consistent with Baker v. Selden?
5. Apple v. Franklin enabled Apple to force Franklin to pull its infringing clones from the market. Franklin eventually created non-infringing clones, but they unsuccessful, because they were only partially compatible with the Apple operating system. Does this affect your assessment of the court's analysis?
6. Currently, computer programs can be protected by both copyright and patent. What are the advantages of each? Should computer programs enjoy both forms of protection? If not, which is more appropriate and why?