Contrary to the dire predictions of some who favored a
Whelan-like approach, the software industry has flourished without
broad copyright protection.
of money before it could pursue an appeal. The
Paperback decision’s endorsement of Whelan was not
only another arrow in Apple’s quiver, but it bolstered
Lotus’ confidence that it could win subsequent lawsuits, first, against Borland International and then
perhaps against Microsoft. The Borland and
Microsoft spreadsheet programs allowed users to execute macros built in Lotus 1-2-3, which necessarily
involved reproducing the Lotus command hierarchy
so successfully challenged in Paperback.
1992 was a turning point in software copyright
law. First, Computer Associates v. Altai discredited
Whelan and rejected its analysis, holding that even if
interface specifications were program “SSO,” copyright did not protect them because of their importance to achieving interoperability. Second, Sega
Enterprises v. Accolade held that making copies of program code for a legitimate purpose such as getting
access to interface information in order to make a
compatible program was a fair and non-infringing use
of the copyrighted code. Third, a judge rejected
Apple’s Whelan-inspired theory that the look and feel
of Microsoft’s graphical user interface was too similar
to that of Apple’s Macintosh interface.
Although Lotus initially won an important round
in its look and feel lawsuit against Borland in 1992,
three years later an appellate court rejected Lotus’s
look and feel and “SSO” claims against Borland.
Although Lotus appealed further to the U.S. Supreme
Court, it could not persuade the Court to reinstate its
victory, and finally Whelan lost its potency.
In retrospect, one can discern that over the
course of a decade, judges managed to hack new
legal doctrines out of the policy ether so that copyright law could be applied to computer programs in
a competitively balanced way. Contrary to the dire
predictions of some who favored a Whelan-like
approach, the software industry has flourished
without broad copyright protection.
Once Altai displaced Whelan, it became clear that
copyright protected program code and expressive
aspects of screen displays, but not much else. This was
because Altai directed that functional design elements
of programs had to be “filtered out” before assessing
whether infringement had occurred.
The increasing “thinness” of program copyrights
may have catalyzed a concomitant boom in patent
applications for software innovations starting in the
mid-1990s. Unfortunately, many software patents are
of questionable validity owing in part to inadequacies
in the patent office’s prior art databases and the low
standards (until very recently) for judging the nonobviousness of claimed inventions.
Hence, courts have once again been called upon to
hack intellectual property law to make it appropriately responsive to the needs of the software industry,
this time on the patent side. In the past few years, the
U.S. Supreme Court has performed some impressive
hacks. It rejected the Federal Circuit’s inflexibly harsh
standards for issuing injunctions in eBay v. MercEx-change. Four members of the Court recognized that
the Federal Circuit’s approach had given patent trolls
too much leverage over makers of complex systems
technologies, such as software, only one small part of
which might infringe a patent.
The Court also rejected the Federal Circuit’s erroneously low standard for judging the nonobviousness
of claimed inventions in the KSR v. Teleflex case. In
addition, it agreed with Microsoft that shipping a
master disk from the U.S. to an overseas destination
should not give rise to damage awards in U.S. courts
for acts performed abroad that would infringe if done
in the U.S.
But the Court alone cannot achieve all of the
needed patent reforms. Congress should pass legislation to create a new post-grant review procedure to
