Engineering Dynamics, Inc. v. Structural Software, Inc. ( 1994 )


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  •                      UNITED STATES COURT OF APPEALS
                              FOR THE FIFTH CIRCUIT
    
                            _______________________
    
                                  No. 92-3444
                            _______________________
    
    
         ENGINEERING DYNAMICS, INC.,
    
                                  Plaintiff-Appellant-Cross-Appellee,
    
         versus
    
         STRUCTURAL SOFTWARE, INC.
         and S. RAO GUNTUR,
    
                                  Defendants-Appellees-Cross-Appellants.
    
    
    _________________________________________________________________
    
              Appeals from the United States District Court
                  for the Eastern District of Louisiana
    _________________________________________________________________
    
                                  (July 13, 1994)
    
    Before JOHNSON, JOLLY, and JONES, Circuit Judges.
    
    EDITH H. JONES, Circuit Judge:
    
               Fifteen    years   ago     Engineering    Dynamics,    Inc.    (EDI)
    
    successfully defended itself against claims that its computer
    
    program   infringed     registered       copyrights       held   by   Synercom
    
    Technology, Inc. on Synercom's user manuals and input formats.
    
    That case held that neither the input formats brought to the
    
    court's   attention    nor    their    sequence     and    organization   were
    
    copyrightable.   Synercom Technology, Inc. v. University Computing
    
    Co., 
    462 F. Supp. 1003
     (N.D. Tex. 1978).        EDI has now switched sides
    
    and seeks a judgment of copyright infringement against Structural
    
    Software, Inc. (SSI), a competitor who copied many of EDI's input
    
    and output formats. The parties primarily differ over the district
    court's holding that computer input and output formats are not
    
    copyrightable and hence cannot infringe a copyright directly or as
    
    a derivative work.             See district court opinion at 
    785 F. Supp. 576
    ,
    
    582 (E.D.La. 1991).
    
                  This opinion examines the extent of copyright and trade
    
    dress law protection of computer/user interfaces and user manuals.
    
    We    reverse      the     district       court's        holding    that     computer/user
    
    interface         in     the    forms     of   input       and     output     formats    are
    
    uncopyrightable and reverse and remand to determine whether there
    
    was infringement.              We affirm the court's other rulings.
    
                                              BACKGROUND
    
                  In 1970, Synercom brought to market a computer program
    
    called STRAN, designed to solve engineering problems in the field
    
    of structural analysis.                The program required the user to "input"
    
    a    large    amount       of    data,    including        construction       details    and
    
    anticipated environmental and other external forces that would act
    
    upon the structure.                The computer program performed numerous
    
    tedious calculations              using    accepted       engineering       principles    to
    
    generate output which facilitated the design and construction of
    
    the structure.
    
                  In       1975,    EDI    entered     the    market    with     its   computer
    
    program, SACS II,1 which utilized precisely the same input formats
    
    and input sequence as Synercom's STRAN program.                             Both SACS and
    
    STRAN      were    run    only    on     mainframe       computers.         Part   of   EDI's
    
    
           1
                There was never a SACS I.            The acronym stands for structural
    analysis computer system.
    
                                                   2
    marketing strategy was to stress the complete compatibility of SACS
    
    with STRAN's input formats, entered into the computer via decks of
    
    80-column keypunch cards.         Synercom, 462 F.Supp. at 1008, 1012.
    
    Synercom had obtained thirteen copyright registrations covering
    
    nine input formats and sued EDI for infringement.             Then-district
    
    judge Higginbotham ruled that the formats of the keypunch cards, as
    
    well as their sequence and organization, were not copyrightable,
    
    thus relieving EDI of any liability for format infringement. Judge
    
    Higginbotham also held, however, that EDI had infringed Synercom's
    
    copyright in its user manuals.        As part of a resulting settlement
    
    agreement, EDI prepared a new edition of its user manual, SACS III,
    
    which did not infringe Synercom's copyright.
    
              Over the years, EDI refined SACS III and its input
    
    formats   to   accommodate        users'   desire    for    greater   speed,
    
    flexibility,   and   ease    of    operation.       After   many   piecemeal
    
    revisions, EDI changed the name of its program to SACS IV.            Despite
    
    the fact that actual paper keypunch cards are rarely used anymore,
    
    EDI has retained the 80-column data input format.            Most users now
    
    enter data as image files and store the data on a magnetic storage
    
    device, e.g., a floppy disk. The 80-column card format is familiar
    
    to relevant users of these programs, thus facilitating training and
    
    allowing them to reevaluate old data decks.          This opinion follows
    
    industry practice and uses the terms "input format" and "card"
    
    interchangeably.
    
              The SACS IV input formats instruct the user to place
    
    specific kinds of information in a specific place on the card.           The
    
    
                                          3
    first five columns or so are reserved for identification of the
    
    card by its name, e.g., WAVE.         The parties' versions of this card
    
    are reproduced in the appendix hereto.               Subsequent columns of
    
    various widths are reserved to enter instructive and descriptive
    
    data.   The WAVE card, for example, is used to calculate ocean wave
    
    forces on structures built offshore.              Several columns allow the
    
    user to instruct the computer as to which wave scenario (load case)
    
    is to be generated and by what wave theory.                  Much of the data
    
    entered describes conditions and parameters needed to generate
    
    hypothetical wave forces, e.g., the waves' size, frequency, and
    
    direction. The placement of the required information on the proper
    
    card and in the proper columns is crucial to obtaining correct
    
    results.     Other input formats instruct or describe many other
    
    structural and environmental factors.
    
                EDI's structural analysis program is actually a "suite"
    
    of 23 semi-autonomous modules, each created to facilitate certain
    
    aspects of    structural     analysis.      Each    module    is   designed   to
    
    interact    with    other   modules    of   the    suite,    for   example,   by
    
    preprocessing certain data, then feeding it to another module. One
    
    module called SEASTATE generates and calculates the environmental
    
    effects on an offshore structure.            This is an important module
    
    because    most    EDI   customers    use   SACS   for   designing    offshore
    
    structures, such as drilling platforms.              Another module called
    
    JOINTCAN is used to design the "joint cans" which connect tubular
    
    members of a structure, taking into account various stresses,
    
    tolerances, and construction techniques.             The heart of the SACS
    
    
                                           4
    suite is a module itself called SACS.                 This module processes,
    
    through the computer, user-supplied environmental and design data
    
    and calculates the static and dynamic forces within and upon each
    
    component of the structure.            A large quantity of output data is
    
    then organized and printed in a systematic fashion that facilitates
    
    further engineering or construction efforts, e.g., showing the
    
    kinds and quantities of forces to which each component of the
    
    structure is subject.
    
               EDI has not copyrighted any of the actual computer
    
    programs comprising the SACS suite, i.e., the source code and
    
    object   code.         Instead,   it   has   chosen   to   protect    itself    by
    
    maintaining      the    program   as   an    unpublished    trade    secret    via
    
    confidentiality contracts with users and other security techniques.
    
    It has, however, obtained four copyright registrations covering the
    
    user manuals for three of the 23 modules:                  SACS III, SACS IV,
    
    SEASTATE, and JOINTCAN.           The SACS suite of programs allegedly
    
    specifies over 200 input formats.               The four copyrighted user
    
    manuals describe 51 formats (excluding nonformatted cards such as
    
    header cards and end cards), most of them pertinent to SACS III2
    
    and SEASTATE.
    
               In 1986, Rao Guntur began developing a similar structural
    
    analysis program targeted at the offshore platform market that
    
    could be used on a personal computer. Guntur's company, Structural
    
    Software, Inc. (SSI), began marketing his program, StruCAD*3D, that
    
         2
                The SACS IV user manual was apparently not offered as evidence and
    is not found intact in the record on appeal. It is apparently not much
    different from SACS III for purposes relevant to this appeal, however.
    
                                             5
    same year.     EDI brought its PC version to market a short time
    
    later.     Although built on a different public-domain structural
    
    analysis program, StruCAD borrowed heavily from the SACS user
    
    interface.    Like SACS, data entry for StruCAD is based on an 80-
    
    column format.    As was the case when EDI copied Synercom's input
    
    format and sequence, many of StruCAD's potential customers were
    
    already familiar with EDI's interface; SSI wanted to minimize
    
    required training for these users and facilitate conversion of SACS
    
    input data files to StruCAD's formats.   StruCAD utilizes 126 input
    
    formats.
    
                EDI's allegations in the instant case differ in three
    
    important respects from Synercom's allegations in 1978. First, the
    
    decks of computer keypunch cards prepared for use in Synercom's
    
    program STRAN were completely compatible with SACS II when it was
    
    introduced.     In the instant case, many individual data cards
    
    completed for use in SACS would require some, but not extensive,
    
    modification before they could be run in StruCAD.   Second, StruCAD
    
    requires dozens of input formats completely different from those
    
    found in SACS III or SACS IV.   Third, while only nine input formats
    
    were alleged to have been copied in Synercom, and the copyright
    
    registrations on each of the nine were at issue, EDI does not claim
    
    protection for any of its individual input formats and output
    
    reports.    Instead, it contends that the sequence and organization
    
    of formats and reports is as a whole copyrightable.
    
                EDI brought suit against SSI and against Guntur in his
    
    individual capacity, claiming that they copied 56 of EDI's input
    
    
                                      6
    formats.     To support its claim, EDI assembled numerous exhibits
    
    highlighting    the       similarities   between     the    alleged    infringing
    
    formats. A close examination of the WAVE input format description,
    
    for example, (see Appendix) reveals that both programs' cards
    
    require precisely the same information in precisely the same data
    
    columns, except that StruCAD requires that columns 5-8 and 31-38 be
    
    left blank while in SACS these columns are optional.                       (But note
    
    that SACS also requires that 31-38 be left blank if columns 25-30
    
    are used.)     In addition to the infringement claim based on input
    
    formats, EDI alleges copying of output report formats, copying of
    
    EDI's user manuals for use in the StruCAD manual, and copying of
    
    portions of EDI's user manuals for use on StruCAD's "help screens."
    
    EDI also brought unfair competition claims against SSI, alleging
    
    violations of section 43(a) of the Lanham Act and La. Rev. Stat.
    
    Ann. § 51:1405(A).
    
               Guntur and SSI (hereinafter often jointly referred to as
    
    SSI) admit that Guntur copied EDI material when he developed
    
    StruCAD.      SSI   argues,     however,      that   input       formats    are   not
    
    copyrightable in the first instance.             Moreover, SSI asserts that
    
    EDI appropriated many of these formats from Synercom's STRAN
    
    program and contends that EDI cannot now claim a proprietary
    
    interest in something that it copied from Synercom.                        Appellees
    
    raise various other defenses to the other copyright and unfair
    
    competition claims that are addressed in the analysis below.
    
               After      a    four-day   bench    trial,      the    district     court
    
    dismissed EDI's claims against Guntur in his individual capacity
    
    
                                             7
    and dismissed all copyright claims involving StruCAD's input and
    
    output formats. The district court agreed, however, that StruCAD's
    
    user manual infringed EDI's copyright in its SACS manuals and
    
    ordered SSI to pay EDI $250,000 in actual damages.    The district
    
    court also enjoined SSI from any further marketing of StruCAD until
    
    the parties agreed on a noninfringing manual for StruCAD.       The
    
    parties were unable to reach an agreement on a new noninfringing
    
    manual, leading the district court to appoint a special master to
    
    decide whether SSI's new manual still infringed.   After reviewing
    
    the manuals and briefs prepared by both parties, the special master
    
    concluded that SSI's new manual did not infringe any of EDI's
    
    copyrights. The recommendations and findings of the special master
    
    were adopted by the district court the same day they were received.
    
              This opinion will address the appealed issues in the
    
    following order:
    
             I.     Copyrightability of input/output formats and
                    user interfaces;
    
             II.    The scope of copyright protection for user
                    interfaces;
    
             III.   User manual infringement;
    
             IV.    Help-screen infringement;
    
             V.     Objections to the Special Master's report and
                    procedures;
    
             VI.    Rao Guntur's liability in his individual
                    capacity;
    
             VII.   Trade dress infringement and unfair
                    competition; and
    
             VIII. Calculation of damages.
    
    
    
                                     8
                                I.   COPYRIGHTABILITY OF
                        INPUT/OUTPUT FORMATS AND USER INTERFACES
    
                      EDI    has   registered      copyrights      in    four    user    manuals
    
    containing              detailed      verbal        descriptions        and      pictorial
    
    representations of input and output formats. EDI contends that SSI
    
    and Guntur infringed EDI's copyrights by copying a portion of its
    
    user manuals -- the input and output formats -- and incorporating
    
    them       into    the     StruCAD    user     manual    and    into    StruCAD's       user
    
    interface.         This, EDI maintains, is either direct unlawful copying
    
    under 17 U.S.C. § 106(1) or unlawful preparation of a derivative
    
    work under 17 U.S.C. § 106(2).
    
                      To establish copyright infringement, a plaintiff must
    
    prove ownership of a valid copyright and copying of constituent
    
    elements of the work that are copyrightable.                        Feist Publications,
    
    Inc. v. Rural Tel. Service Co., 
    499 U.S. 340
    , 361, 
    111 S. Ct. 1282
    ,
    
    1296 (1991).            Copyright ownership is shown by proof of originality
    
    and copyrightability in the work as a whole and by compliance with
    
    applicable statutory formalities.3                   Plains Cotton Coop. Ass'n. v.
    
    Goodpasture Computer Serv., Inc., 
    807 F.2d 1256
    , 1260 (5th Cir.),
    
    cert. denied,            
    484 U.S. 821
        (1987).      Two       separate    components
    
    underlie proof            of   actionable      copying.        First    is     the   factual
    
    question          whether      the    alleged       infringer       actually     used   the
    
    copyrighted material to create his own work.                        Copying as a factual
    
    matter typically may be inferred from proof of access to the
    
    
    
           3
                EDI complied with the statutory formalities in regard to the user
    manuals and input formats and output reports reproduced therein.
    
                                                    9
    copyrighted work and "probative similarity."4                 Plains Cotton, 807
    
    F.2d at 1260. Not all copying, however, is copyright infringement.
    
    Feist, 499 U.S. at 361, 111 S.Ct. at 1296.                 The second and usually
    
    more   difficult      question   is    whether       the    copying    is     legally
    
    actionable.       This requires a court to determine whether there is
    
    substantial similarity between the two works.                 Plains Cotton, 807
    
    F.2d at 1260.
    
                On appeal, SSI does not contest the validity of EDI's
    
    ownership in the four copyrighted user manuals as a whole.                     Nor is
    
    copying as a factual matter disputed; Guntur candidly testified
    
    that he used EDI's formats when developing StruCAD.                   Instead, SSI
    
    raises several contentions.           First, SSI asserts that under this
    
    court's    Plains    Cotton   decision,      which    allegedly       approved   the
    
    Synercom district court decision, user input formats are not
    
    copyrightable as a matter of law.                SSI elaborates upon this
    
    argument    by    pointing    out     that   nine     of     the    formats    found
    
    uncopyrightable in Synercom are nevertheless alleged by EDI here to
    
    be protected.       Second, SSI asserts that EDI's computer input and
    
    output formats represent unoriginal facts and lists of facts that
    
    are not copyrightable and thus are not subject to infringement.
    
    Third, SSI contends that the SACS IV input and output formats
    
    represent    an     uncopyrightable     idea,    process       or   method.      EDI
    
    
    
          4
                Professor Latman distinguishes between "probative similarity,"
    which relates to factual copying, and "substantial similarity," which relates
    to actionable copying. See 3 Melville B. & David Nimmer, Nimmer on Copyright
    § 13.01[B] (1993) (hereinafter Nimmer); see also Gates Rubber Co. v. Bando
    Chemical Indus., Ltd., 
    9 F.3d 823
    , 832 (10th Cir. 1993) (adopting same
    terminology).
    
                                            10
    distinguishes the instant case from Synercom and responds that its
    
    input and output formats, at least when taken as a whole, are
    
    copyrightable.        EDI further argues that SSI has infringed EDI's
    
    copyright by SSI's "massive appropriation of plaintiff's expression
    
    at the interface."
    
                This inquiry represents a subset of the general questions
    
    surrounding computer program copyrightability.               Some of the issues
    
    in this novel and complex area of law are slowly being resolved.
    
    Congress has declared that computer programs are in principle
    
    entitled to copyright protection.5 That decision largely overcame,
    
    though it does not fully answer, one major statutory exception to
    
    copyrightability, the "useful article" exception.6                  Most courts
    
    confronted with the issue have determined that copyright protection
    
    extends not only to the literal elements of a program, i.e., its
    
    source    code   and    object   code,7    but   also   to   its    "nonliteral"
    
    elements, such as the program architecture, "structure, sequence
    
    and    organization",      operational       modules,     and      computer-user
    
    interface. See, e.g., Computer Assocs. Int'l, Inc. v. Altai, Inc.,
    
    
          5
                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.
          6
                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.
    
    17 U.S.C. § 102(b).
          7
                Source code is the programming language readable by human
    programmers; object code is the binary expression that controls the computer
    hardware.
    
                                          11
    
    982 F.2d 693
     (2d Cir. 1992); Gates Rubber Co. v. Bando Chemical
    
    Indus., 
    9 F.3d 823
     (10th Cir. 1993); Lotus Development Corp. v.
    
    Paperback Software Int'l, 
    740 F. Supp. 37
     (D.Mass. 1990) (Lotus I).
    
    But as one moves away from the literal code to more general levels
    
    of a program, it becomes more difficult to distinguish between
    
    unprotectible ideas, processes, methods or functions, on one hand,
    
    and copyrightable expression on the other. Lotus I, 740 F.Supp. at
    
    53.   Court decisions are, generously described, in a state of
    
    creative    ferment   concerning    the   methods    by   which   nonliteral
    
    elements of computer programs may be identified and analyzed for
    
    copyrightability.8
    
                Until recently, it could be argued that Fifth Circuit
    
    precedent    precluded    recognition     of   the   copyrightability      of
    
    nonliteral elements of computer programs.         This argument was based
    
    on the Plains Cotton case, an alleged Fifth Circuit endorsement of
    
    the district court decision in Synercom.         Synercom, decided before
    
    Congress passed the 1980 amendments to the Copyright Act, held that
    
    80-column data cards, developed for an early species of punch-card
    
    computers, represented an uncopyrightable process or idea because
    
    they could not be divorced from their mode of expression.            SSI and
    
    the district court interpreted Plains Cotton broadly as adopting
    
    Synercom.    That Plains Cotton did not actually do so has now been
    
    settled by this court in Kepner-Tregoe, Inc. v. Leadership Software
    
    
    
          8
                Compare the approaches used by the courts in Whelan Assocs., Inc.
    v. Jaslow Dental Lab., Inc., 
    797 F.2d 1222
     (3d Cir. 1986), cert. denied, 
    479 U.S. 1031
     (1987); Altai, supra; Lotus I, supra; Brown Bag Software v. Symantec
    Corp., 
    960 F.2d 1465
     (9th Cir.), cert. denied, 
    1135 S. Ct. 198
     (1992); etc.
    
                                         12
    Inc., 
    12 F.3d 527
     (5th Cir. 1994).                   Kepner-Tregoe embraced the
    
    "general, noncontroversial proposition that nonliteral aspects of
    
    copyrighted        works          --      like      structure,          sequence       and
    
    organization -- may be protected under copyright law . . ."                             12
    
    F.3d at 536, n.20.             Thus, SSI benefits from no synergy with
    
    Synercom.9
    
                 But SSI also makes a more particular argument based on
    
    Synercom.    Because Synercom declared that particular input formats
    
    integral     to     SACS     IV's        predecessor         program        (STRAN)    were
    
    noncopyrightable ideas, SSI contends, the same must be true of
    
    those formats descended from STRAN. We disagree. In Synercom, the
    
    plaintiff sought copyright protection for individual input formats;
    
    here, EDI makes a different claim that several dozen input formats
    
    taken together form a copyrightable work, because they represent
    
    but   one   of    many     ways    of     expressing     a    mode     of    computerized
    
    structural       analysis.             This   general    point       renders     Synercom
    
    distinguishable.
    
                 The holding in Kepner-Tregoe resolves only one level of
    
    controversy between the parties, albeit the level on which the
    
    district court rested his decision.                After Kepner-Tregoe, one must
    
    conclude that nonliteral elements of computer programs may be
    
    copyrightable      in    the      Fifth       Circuit,   but    not     that    they   are
    
    
    
    
          9
                SSI contends that we should not analyze the input formats as
    nonliteral elements because that analysis depends on the existence of a
    copyright on the underlying program. We reject this argument. It makes no
    difference to the formats' copyrightability whether we analyze them as
    springing from a computer program or from a user manual.
    
                                                  13
    necessarily copyrightable in this case.                  To that issue we must
    
    turn.
    
                                 II. SCOPE OF COPYRIGHT
                             PROTECTION FOR USER INTERFACES
    
                   Two qualifications on this discussion must be noted.
    
    Because of the factual content of many of these issues, it is
    
    expedient to remand to the district court, which conducted a full-
    
    scale trial, to reconsider his decision according to the principles
    
    about to be explained.             The judge's interpretation of Synercom, a
    
    decision by which he believed he was bound, rendered a close
    
    factual analysis unnecessary.            Second, this is not a case in which
    
    the    outer     limits       of   copyright    protection   for   computer-user
    
    interface need be explored.            The input and output formats for SACS
    
    IV are quasi-textual; while they guide the user in performing a
    
    series of sophisticated structural analyses, they consist of a
    
    series of words and a framework of instructions that act as prompts
    
    for the insertion of relevant data. In some computer programs, the
    
    user    interface       may    merge   almost   wholly   with   the   expression,
    
    processes, or ideas embodied in the program -- voice-activated or
    
    virtual reality programs or those attuned to the human heartbeat
    
    furnish some examples that may trouble courts in the future.                 We do
    
    not     presume    to     anticipate     the    legal    consequences   of   such
    
    technological developments.
    
                   The analysis below focuses, as did the parties in their
    
    briefs, on the copyrightability of EDI's input formats.                  There is
    
    no intuitive reason why the analysis should be any different for
    
    output formats.           Indeed, in some cases it may be difficult to
    
                                              14
    classify   a   given   interface   as      one    or    the   other.      Clearly,
    
    therefore, some output formats will contain sufficient original
    
    expression to merit protection.         Cf. Broderbund Software, Inc. v.
    
    Unison World, Inc., 
    648 F. Supp. 1127
     (N.D. Cal. 1986) (interface of
    
    program which generated customized greeting cards copyrightable).
    
               Generally,     we   endorse        the       abstraction-filtration-
    
    comparison method of determining copyright protection for computer
    
    programs, which has been ably elucidated by the Tenth Circuit in
    
    Gates Rubber, 
    9 F.3d 823
    , 834 (10th Cir. 1993).                         The court
    
    summarized this method as follows:
    
                    First, in order to provide a framework
               for analysis, we conclude that a court should
               dissect the program according to its varying
               levels of generality as provided in the
               abstractions test. Second, poised with this
               framework, the court should examine each level
               of abstraction in order to filter out those
               elements    of   the    program    which    are
               unprotectable.    Filtration should eliminate
               from comparison the unprotectable elements of
               ideas,   processes,   facts,    public   domain
               information, merger material, scenes a faire
               material, and other unprotectable elements
               suggested by the particular facts of the
               program under examination. Third, the court
               should then compare the remaining protectable
               elements with the allegedly infringing program
               to determine whether the defendants have
               misappropriated substantial elements of the
               plaintiff's program.
    
    It is unnecessary here to reproduce the Gates Rubber court's
    
    thoughtful explanations of the various components of this approach.
    
    See also discussions in Altai, 982 F.2d at 706-11; 3 Nimmer,
    
    §   13.03[F]   (advocating     much     the      same    test   as     "successive
    
    filtering").     We shall apply that methodology to the parties'
    
    arguments in order to provide guidance and to narrow the issues on
    
                                          15
    remand. The abstraction-filtration-comparison method was developed
    
    in cases dealing with the copyrightability of parts of computer
    
    programs    other       than   user    interface.         Judge    Keeton,    however,
    
    employed a similar systematic approach to the Lotus user interface
    
    cases.     See Lotus I, supra; Lotus Development Corp. v. Borland
    
    Int'l,   Inc.,     788    F.Supp       78   (D.   Mass.    1992)(Lotus    II);      etc.
    
    Describing       this    approach      as    abstraction-filtration-comparison
    
    should not convey a deceptive air of certitude about the outcome of
    
    any particular computer copyright case.                   Protectible originality
    
    can manifest itself in many ways, so the analytic approach may need
    
    to be varied to accommodate each case's facts.                    See Altai, 982 F.2d
    
    at 706 (three-step test can and should be modified when computer
    
    technology demands it); Gates Rubber, 9 F.3d at 834, n.12 (same).
    
    Given that caveat, we adopt the Gates Rubber/Altai/Nimmer method to
    
    consider EDI's user interface, input formats and output reports.
    
                A.      Abstraction
    
                The     purpose      of    segmenting    a     computer    program      into
    
    successive levels of generality is to "help a court separate ideas
    
    [and processes] from expression and eliminate from the substantial
    
    similarity   analysis          those   portions     of    the   work   that   are    not
    
    eligible for copyright protection."                      3 Nimmer, § 13.03[F] at
    
    13-102.17.
    
                Judge Learned Hand first penned the abstraction method to
    
    analyze the elements of a literary work to distinguish between
    
    protectible expression and abstract unprotectible ideas. Nichols v.
    
    Universal Pictures Corp., 
    45 F.2d 119
    , 121 (2d Cir. 1930), cert.
    
    
                                                16
    denied, 
    282 U.S. 902
     (1931).       Analogizing his formula to computer
    
    programs, at each level of abstraction into which the program can
    
    be segmented, the court determines whether the contents of that
    
    segment depict an idea, process or method, which, inseparable from
    
    its expression or incapable of expression by any other means, is
    
    therefore uncopyrightable.10
    
                Abstraction of ideas from expression does not pose a
    
    particular conceptual hurdle in this case for three reasons.
    
    First, EDI seeks copyright protection not of its entire suite of
    
    SACS programs but only of approximately 230 input-output formats
    
    that    comprise   the   user   interface.        The   user    interface   is
    
    analytically    distinct   from   other   parts    of   the    program.     See
    
    Ogilvie, supra note 10, 
    19 Mich. L
    . Rev. at 542 n. 73.            Second, EDI
    
    claimed protection of input and output formats not individually but
    
    en masse. It is thus unnecessary to decide whether each individual
    
    input format card or output format report represents an idea or an
    
    expression.
    
    
    
    
           10
                The abstraction method makes good sense intuitively, but its
    application to computer programs has been problematic. A particular source of
    difficulty has been definitional -- how to describe the levels of generality
    ascending in computer programs from the literal code to the most general
    "idea" of the program itself. Case law has approached the definitional
    problem inconsistently. One author, while criticizing the courts' diverse and
    halting efforts at using the abstraction method, suggests that the levels of
    abstraction can be conformed to six technical component norms recognized among
    computer programmers. See John W. L. Ogilvie, Note, Defining Computer Program
    Parts under Lerned Hand's Abstraction Test in Software Copyright Infringement
    Cases, 
    91 Mich. L
    . Rev. 526 (1992). His proposed levels of abstraction, in
    descending order, are: the main purpose, system architecture, abstract data
    types, algorithms and data structures, source code, and object code.
    Ogilvie's levels of abstraction have already been approved by one circuit
    court. Gates Rubber Co., 
    9 F.3d 835
    . Ogilvie's levels of abstraction do not
    directly apply to the present case, however, because his note does not deal
    with user interfaces.
    
                                         17
               Third, the formats, taken as a whole, readily qualify as
    
    "expression"     measured      against     the    ideas   versus   expression
    
    dichotomy.    Not all user interfaces will so easily pass that test.
    
    The purpose of the SACS input formats is to mediate between the
    
    user and the program, identifying what information is essential and
    
    how it must be ordered to make the program work.                   The output
    
    formats structure the results of calculations performed by the
    
    program informatively for the user.              These formats do not self-
    
    evidently convey only an "idea."
    
               Because of the functional quality of user interface, the
    
    abstraction    portion    of    the   three-step     methodology    may   pose
    
    difficult questions.        A user interface may often shade into the
    
    "blank form" that epitomizes an uncopyrightable idea, Baker v.
    
    Selden, 
    101 U.S. 99
     (1880),11 or it can partake of high expression,
    
    like that found in some computerized video games.           In the middle of
    
    the abstraction spectrum sit user interfaces such as that of Lotus
    
    
         11
                This approach is consistent with the Supreme Court's analysis in
    Feist, where the Court required "some minimal degree of creativity," or a
    "minimal creative spark" before finding copyrightability in a compilation of a
    telephone book's white pages. 499 U.S. at 362, 363, 111 S.Ct. at 1296, 1297.
    More than trivial originality is necessary, however. This approach is
    consistent with the great majority of blank-form cases decided in other
    circuits. See Harper House, Inc. v. Thomas Nelson, Inc., 
    889 F.2d 197
     (9th
    Cir. 1989) (compilation of blank forms in executive organizer copyrightable,
    but individual blank diary forms not protectible); Cash Dividend Check Corp.
    v. Davis, 
    247 F.2d 458
     (9th Cir. 1957) (finding copyrightability of check with
    accompanying text describing a stamped-check plan to convert savings stamps
    into cash); Brown Instrument Co. v. Warner, 
    161 F.2d 910
     (D.C. Cir. 1947)
    (graphic temperature-pressure charts designed to record not copyrightable);
    Taylor Instrument Co. v. Fawley-Brost Co., 
    139 F.2d 98
     (7th Cir. 1943), cert.
    denied, 
    321 U.S. 785
     (1944) (blank form for recording temperatures not
    copyrightable); see also Harcourt, Brace & World, Inc. v. Graphic Controls
    Corp., 
    329 F. Supp. 517
     (S.D.N.Y. 1971) (finding copyrightability of optically
    scanned answer sheet forms which provided spaces for indicating correct
    answers, but which also conveyed certain minimal information). Blank forms
    that are designed merely to record information rather than convey it are not
    copyrightable. See generally 1 Nimmer, § 2.18[B].
    
                                          18
    1-2-3, whose menu structure, including its long prompts, contains
    
    numerous expressive features.            See Lotus I, 740 F.Supp. at 65-68.
    
    As Judge Keeton put it, if a best-selling program's interface were
    
    not copyrightable, competitors would be free to emulate the popular
    
    interface exactly so long as the underlying programs were not
    
    substantially similar.         This cannot be the law.
    
                The    scientific,       technical      character     of   the   SACS   IV
    
    program distinguishes it in certain respects from the open-ended,
    
    user-directed spreadsheet user interface found copyrightable in
    
    Lotus I.    But on this initial level of abstraction analysis, it is
    
    certain that there are numerous ways in which either input or
    
    output formats could have been structured in order to achieve the
    
    program's purpose.           Consequently, it is appropriate to proceed
    
    further in considering the copyright protection available to EDI
    
    for its input formats and output reports.
    
                B.      Filtration
    
                The filtration component of the analysis seeks to isolate
    
    noncopyrightable elements from each particular level of a program.
    
    Copyright    protects        the    expression      of   ideas,    not    the   ideas
    
    themselves,       and   it    does    not    protect     processes,      methods    or
    
    scientific discoveries.            Other materials not subject to copyright
    
    include facts, information in the public domain, and scenes a
    
    faire, i.e., expressions that are standard, stock or common to a
    
    particular subject matter or are dictated by external factors. See
    
    Gates Rubber, 9 F.3d at 837-38.                  Each of these limitations upon
    
    copyright or defenses against illicit copying follows logically
    
    
                                                19
    from the purpose of the Copyright Act: to protect an author's
    
    original, creative expression insofar as is compatible with general
    
    advancement of expressive arts and "the free use and development of
    
    non-protectable ideas and processes."             Altai, 982 F.2d at 711.
    
                  SSI forcefully advances several of these concepts in
    
    defense of the copying it engaged in to produce StruCAD.                      SSI
    
    contends that EDI's user interface comprises unoriginal facts,
    
    which are not copyrightable.          It asserts that the data formats are
    
    merely a template that enables an engineer to use his tool, the
    
    computer. SSI also denies that EDI's "compilation" of input/output
    
    formats is copyrightable.           Finally, SSI contends that EDI's user
    
    interface depends so heavily on engineering industry standards and
    
    practice    that      it   is   unprotectible   under   the    scenes    a   faire
    
    doctrine.
    
                  1.      Unprotectible Facts versus Original Expression
    
                  SSI describes the input/output data formats as "garden
    
    variety documentation that merely presents column-by-column formats
    
    of input data and describes the information . . . to be stored in
    
    each column, pictures, figures or diagrams, which merely elucidate
    
    basic engineering and mathematical relationships."                     Therefore,
    
    according to SSI, the input/output formats fail to satisfy the
    
    Feist-Zack Meyer originality test.              In Feist, the Supreme Court
    
    held that an alphabetically arranged phonebook lacks the creativity
    
    and originality necessary to sustain a copyright.                    In Donald v.
    
    Zack Meyer's T.V. Sales and Service, 
    426 F.2d 1027
     (5th Cir. 1970)
    
    (the   Zack        Meyer   case),   this    circuit   held    that    boilerplate
    
    
                                               20
    contractual language printed on a blank form was insufficiently
    
    original.
    
                As a comparison with the facts of Feist and Zack Meyer
    
    makes obvious, SSI's argument is simplistic in the present context.
    
    Certainly, one may isolate each individual input requirement or
    
    series of requirements and contend that it is merely shorthand for
    
    a common engineering formula.        Likewise, abbreviations for terms,
    
    dictated by necessity or industry standard, are uncopyrightable by
    
    themselves.       What appears on EDI's input and output formats,
    
    however, are not any kind of formulas or "facts" as such, but
    
    organized, descriptive tables for entry of data on which the
    
    computer will perform necessary calculations.               "Facts" are entered
    
    by the user and "factual" algorithms are applied by the computer,
    
    but the appearance and expression of the user interface are not
    
    themselves a representation of "facts."           SSI does not assert that
    
    there is only one way or a limited number of ways in which such
    
    tables may be or are usually set forth.               Given the complexity of
    
    offshore design projects, it is hardly surprising that a number of
    
    other competing structural design programs exist in the market, and
    
    the trial court found them dissimilar to SACS.              As a matter of law,
    
    the   input      formats   and   output     reports    do     not   embody   only
    
    noncopyrightable "facts."
    
                2.     Input Formats as a Template, Process or Method
    
                Because    the   input   data    formats    are    organized     in   a
    
    particular fashion to effectuate the performance of mathematical
    
    calculations, SSI likens them to a template or tool used by the
    
    
                                          21
    engineer.        We assume this argument relies on Baker v. Selden, 
    101 U.S. 99
     (1880), although SSI has not cited that seminal case.
    
    Baker rejected a claim of copyright on a book that described a
    
    method of bookkeeping.        Moreover, the author's ledger sheets were
    
    held not copyrightable because they were necessary incidents to the
    
    idea or process embodied in the bookkeeping method.                    Like Baker v.
    
    Selden, whether one denominates the input formats in this case as
    
    a process or as expression "merged" with a process, the demarcation
    
    between their utilitarian and expressive aspects is difficult to
    
    draw.      Compare Altai, 982 F.2d at 712; Synercom, 462 F.Supp. at
    
    1013-14.
    
                    The difficulty may best be illustrated by comparing this
    
    case    with     those   concerning   infringement        of     the   Lotus   1-2-3
    
    spreadsheet program.        The Lotus program enables a user to create
    
    documents adapted to his particular needs in a framework that may
    
    be varied and that may utilize different types of information.                   As
    
    the district court held in Lotus I, the command format and sequence
    
    structure in an original word processing or computer spreadsheet
    
    should     be    copyrightable   because    as    a    whole,    the    interface's
    
    structure and hierarchy constitute a high degree of original
    
    expression.        See Lotus I, 740 F.Supp. at 65-68.
    
                    The SACS input cards, in contrast, perform only one,
    
    admittedly challenging task: they supply engineering data for
    
    offshore structures.         The question is whether the utilitarian
    
    function of the input formats, which ultimately act like switches
    
    in   the    electrical     circuits   of    the       program,    outweigh     their
    
    
                                           22
    expressive purpose so as to preclude copyright protection.                       On
    
    balance, we believe they do not.              EDI's input formats as a whole
    
    convey substantial information regarding what data the user needs
    
    to gather and how they should be organized for the program to run
    
    properly.        One   of    EDI's   trial    witnesses   testified   that      the
    
    interface "imparts knowledge" by telling the user which data to
    
    collect as well as the order of collection.               This alone does not
    
    necessarily mean that SACS imparts knowledge through protectible
    
    expression.       But, generally, functional interfaces that directly
    
    teach or guide the user's independent decisions are more expressive
    
    than functional interfaces that lack these qualities. Although the
    
    degree of interaction may not be as high as that present in Lotus,
    
    overall,    EDI    has      proved   original   expressive   content      in    the
    
    selection, sequence and coordination of inputs.
    
                3.     EDI's User Interface as a "Compilation" of "Facts"
    
                SSI analogizes the copyrightability of the SACS input
    
    formats and output reports to the copyrightability of compilations
    
    as addressed in Feist Publications, Inc. v. Rural Tel Serv. Co.,
    
    Inc., 
    499 U.S. 340
    , 
    111 S. Ct. 1282
     (1991).           That case discarded the
    
    "sweat-of-the-brow"          doctrine   for   compilations   in   favor    of   an
    
    analysis focusing on the originality of the compiler's expression.
    
    "[C]opyright protects only the elements that owe their origin to
    
    the compiler -- the selection, coordination, and arrangements of
    
    facts."     499 U.S. at 359, 111 S.Ct. at 1295.               "No matter how
    
    original the format, however, the facts themselves do not become
    
    original through association. . . . This inevitably means that the
    
    
                                             23
    copyright in a factual compilation is thin."                499 U.S. at 349, 111
    
    S.Ct. at 1289.          Focusing on Feist's test for originality, SSI
    
    argues that many of the SACS input formats derive directly from
    
    Synercom's STRAN program.           Moreover, SSI posits, "data formats are
    
    data formats": organizing parameters and variables as a series of
    
    columns     of    engineering       data   amounts    to    a   "garden   variety
    
    arrangement" required in any structural analysis program and is
    
    similar to the unoriginal arrangement of names, addresses, and
    
    telephone numbers in a telephone directory. SSI concludes that the
    
    whole    bundle    of    EDI's   input     formats    and   outputs    reports     is
    
    uncopyrightable.
    
                These arguments construe Feist both too broadly and too
    
    narrowly.        Whether Feist should apply at all to the formats in
    
    question here is doubtful.           As stated earlier, EDI's data cards do
    
    not consist of mere "facts," nor do they portray a "compilation" so
    
    much as a progressive demonstration of a particular engineering
    
    program.    But to the extent that Feist's definition of originality
    
    applies here, it appears that EDI has selected data and arranged
    
    their placement in a way that is unique and original to SACS.                    See
    
    Lotus Dev. Corp. v. Borland Int'l Inc., 
    831 F. Supp. 223
    , 231 (D.
    
    Mass. 1993) (Lotus V) (finding command menu interface copyrightable
    
    by comparing it to compilation: "The selection, arrangement, and
    
    manner of presentation in a compilation may provide the user with
    
    a method or systematic manner of accessing the (uncopyrightable)
    
    facts.      Thus,       copyright    law   protects    only     that   part   of    a
    
    compilation that the reader actually uses for selection of facts
    
    
                                               24
    that the reader wants to know").          The creativity inherent in EDI's
    
    program is proved by the existence by other, dissimilar structural
    
    engineering programs available in the market.                The existence of
    
    creativity      is    reinforced    by   SSI's     observation   that    StruCAD
    
    performs the same functions as SACS with significantly fewer input
    
    formats.
    
               4.        User Formats as Dictated by Industry Standard
    
               Based       upon   the   nature    of    the   offshore   structural
    
    engineering marketplace, SSI contends, EDI had to use the same or
    
    similar formats to those it chose in order to provide a compatible,
    
    standardized and efficient product for its customers.                   In other
    
    words, scenes a faire dictated EDI's choice of input formats and
    
    output reports in the same way that the external requirements of
    
    the cotton market dictated the program in Plains Cotton, supra,
    
    leading to a rejection of copyright protection in that case.12
    
    Although the parties disagree over application of the doctrine in
    
    this case, neither side cites any evidence to support its position.
    
    On remand, the district court must consider whether or to what
    
    
    
    
          12
                A programmer's freedom of design choice may be circumscribed by
    other extrinsic considerations such as the nature of the hardware on which the
    program will run, compatibility requirements of other programs, computer
    manufacturers' design standards, the demands of the industry being served, and
    widely accepted programming practices within the computer industry. See
    Altai, 982 F.2d at 709-10, citing 3 Nimmer § 13.03[F][3], at 13-65-71. In
    Lotus I, for example, the court found that use of a rotated "L" screen display
    for spreadsheets, the use of a slash key to invoke a menu system, "Q" for
    quitting or exiting a system, and similar other common interfaces are not
    copyrightable because their use is unoriginal, nonexpressive, or thoroughly
    standardized. See Lotus I, 740 F.Supp. at 78. This opinion deals only with
    the externalities raised by SSI.
    
                                             25
    extent industry demand and practice in the offshore engineering
    
    market dictated the SACS IV input and output formats.13
    
               This finding is only the first step, however, for anyone
    
    may copy uncopyrightable elements in a copyrighted work.                        SSI
    
    argues   that    many    of     EDI's    cards    are    unoriginal      and   thus
    
    uncopyrightable.      A close examination of the actual input formats
    
    is required to determine whether the allegedly infringed cards are
    
    copyrightable.    Among the allegedly infringed cards, for instance,
    
    some may be so generic, e.g., a "header" or an "end" card, that
    
    they lack that minimal degree of creativity required for copyright
    
    protection.      If     other    cards   for     which   EDI   claims    copyright
    
    protection almost wholly derive from the input formats developed by
    
    Synercom many years earlier, they would also lack the requisite
    
    originality.14
    
               Filtration      has    resulted       in   one   area   of    potential
    
    unprotectibility that must be considered on remand, and that
    
    relates to the impact of the scenes a faire doctrine.                   SSI's other
    
    
    
          13
                Filtration may well render many of EDI's output formats
    uncopyrightable. (An example of the parties' output reports is reproduced in
    the appendix.) The remarkable similarities in some of these formats may be
    due to the inherent qualities of the ideas expressed (merger) or compliance
    with industry standards (scenes a faire). For example, each program must
    identify individual structural members and the forces acting upon them in a
    manner easily understood by engineers. The district judge will determine on
    remand whether there are multiple ways to express these concepts consistent
    with industry practice.
          14
                It appears that nine cards (TITLE, AMOD, SECT, GRUP, JOINT,
    PERSET, LOADCN, LOAD, and LDCOMB) are virtually the same as those developed by
    Synercom. A few have very slight modifications from Synercom's cards. For
    example, the AMOD cards in SACS and StruCAD provide for three-digit load
    condition numbers while STRAN allowed for only two-digit entries. This sort
    of originality probably does not meet the minimal requirements demanded by
    copyright. Similarly, the addition of columns for commentary is not
    sufficient to imbue a recycled Synercom card with copyrightability.
    
                                             26
    global objections to copyright protection for the input formats and
    
    output reports are ill-founded.
    
                 C.   Comparison
    
                 After the district court completes the "filtration" of
    
    the user interface as described, it must then decide whether SSI's
    
    work is substantially similar to the copyrighted works.            See n.4
    
    supra.    The district court never ruled on many of the factual
    
    issues governing substantial similarity because of its view that
    
    computer data formats are not copyrightable.
    
                 To determine substantial similarity, the court should
    
    "focus on whether the defendant copied any aspect of this protected
    
    expression."      Altai, 982 F.2d at 710.    In this case, it is probably
    
    advisable for the court first to determine whether variations in
    
    the registered and copyrightable format cards adopted by StruCAD
    
    render the cards noninfringing elements of the larger work at the
    
    individual card level.         Then the court may determine whether the
    
    subset of StruCAD cards that are individually substantially similar
    
    to   their    counterparts      in   SACS,   are,    taken   together,   so
    
    substantially similar to EDI's copyrighted work or a part thereof
    
    as   to   constitute    infringement.        While   a   determination   of
    
    substantial similarity is, in the final analysis, a value judgment
    
    that resists the imposition of a rigid analytical framework, this
    
    only heightens the need for methodical analysis.              The ultimate
    
    focus, in accordance with EDI's contention, should be on the input
    
    formats and output reports taken as a whole.
    
    
    
    
                                          27
               Another proposition to bear in mind is that the scope of
    
    protection afforded by a copyright is not constant across all
    
    literary works.     Infringement is far more likely to have occurred
    
    where a defendant has copied a memorable phrase from a short poem
    
    than where the defendant has copied an explanatory phrase from a
    
    voluminous textbook on biochemistry, because the law is more
    
    protective of highly original and highly expressive works than it
    
    is   of functional    and   nonfiction     works.    This   distinction    is
    
    recognized in Feist, where, because the allegedly infringed work
    
    was a collection of facts, the Court noted that any copyright was
    
    "thin."    499 U.S. at 349, 111 S.Ct. at 1289.           The same cautious
    
    approach to protection is appropriate for computer user interfaces.
    
    To the extent that they are highly functional, or, like the output
    
    formats in this case, to the extent that they contain highly
    
    standardized technical information, they may lie very near the line
    
    of uncopyrightability.15
    
               This relatively narrow scope of copyright protection has
    
    been adopted by several courts.           In Lotus Dev. Corp. v. Borland
    
    Int'l, Inc., 
    831 F. Supp. 202
    , 209 (D.Mass. 1993) (Lotus IV), Judge
    
    Keeton referred to the scope of copyright protection as a sliding
    
    
          15
                As mentioned earlier, some cases may require courts to vary the
    abstraction-filtration-comparison test to accommodate particular facts. We do
    not find it necessary to do so, but by way of illustration, our interface
    copyrightability analysis in this case has focused on three inquiries. First,
    whether the interface is simply a blank form that fails to convey expression
    to the user. Second, whether the interface is sufficiently user-directed and
    interactive. Third, analogous to a compilation, whether the interface
    provides original expression through the selection, sequence, and organization
    of information provided to and collected from the user. In this case all of
    these requisites were met. After applying other more standard
    "copyrightability filters," such as scenes a faire, the district court will
    determine whether the thin copyright EDI may enjoy has been infringed.
    
                                         28
    scale that changes with the availability of expressions for a given
    
    idea, and he impliedly accorded computer interfaces only a narrow
    
    protection.      Noting that the menu commands and menu structure of
    
    the   computer     spreadsheet     program           in    that    case     were   highly
    
    functional,      Judge    Keeton   emphasized             that    the     defendant    had
    
    infringed by copying verbatim Lotus's entire command menu hierarchy
    
    despite the availability of many different command structures to
    
    perform the same functions.           See also Apple Computer, Inc. v.
    
    Microsoft     Corp.,     
    799 F. Supp. 1006
    ,           1021    (N.D.    Cal.   1992)
    
    (determining scope of infringement for user interface:                                "[I]f
    
    technical or conceptual constraints limit the available ways to
    
    express an idea. . . copyright law will abhor only a virtually
    
    identical copy of the original."); Atari Games Corp. v. Nintendo of
    
    America, Inc., 
    975 F.2d 832
    , 840 (Fed. Cir. 1992) (determining
    
    infringement of nonliteral elements of computer program: "Even for
    
    works warranting little copyright protection, verbatim copying is
    
    infringement."); Digital Communications Assocs., Inc. v. Softklone
    
    Distrib.    Corp.,       
    659 F. Supp. 449
            (N.D.Ga.      1987)   (finding
    
    infringement in a computer program's status screen which was
    
    "virtually identical" with the plaintiff's); Harcourt Brace &
    
    World, Inc.      v.   Graphic    Controls       Corp.,       
    329 F. Supp. 517
    ,   525
    
    (S.D.N.Y. 1971) (according narrow scope of protection to answer
    
    sheet designed to be optically scanned by computers); 3 Nimmer,
    
    § 13.03[B][2][b] ("If the only original aspect of a work lies in
    
    its literal expression, then only a very close similarity, verging
    
    
    
    
                                              29
    on the identical, will suffice to constitute an infringing copy.")
    
    (citing cases).
    
                      III.    INFRINGEMENT OF USER MANUALS
    
                The   district    court    found    that    the    StruCAD    manual
    
    infringed EDI's copyright in its user manuals.                This finding was
    
    based entirely on text, pictures, diagrams, illustrated examples,
    
    and flow charts depicted in the manuals, but not the input and
    
    output formats.     785 F.Supp. at 583.         After these findings were
    
    entered, SSI revised its manual, but the parties could not agree as
    
    to whether this new manual infringed.          The district judge referred
    
    the matter to a special master under Fed. R. Civ. Proc. 53.                  The
    
    special master issued findings and conclusions of law in a report
    
    in which it determined that SSI's new manual did not infringe.               The
    
    district judge adopted the special master's report the same day it
    
    was filed.
    
                EDI argues that the findings of the special master, to
    
    the extent they were adopted by the district court, were clearly
    
    erroneous.   In addition to procedural objections, discussed below,
    
    EDI insists that SSI's revised manual contains many examples of
    
    allegedly    infringing     material   from    the    old   manual   which   the
    
    district court had held to be infringing.
    
                One   example    EDI   emphasizes    in    particular    is   SSI's
    
    repeated use of a table of default values of certain engineering
    
    constants admittedly taken from EDI's copyrighted manuals.                These
    
    constants (specifically, drag and mass coefficients for structural
    
    members) were allegedly researched and compiled by EDI as part of
    
    
                                           30
    its efforts to accurately represent these forces in its computer
    
    program.    They are not copyrightable, however, because they are
    
    facts, despite the fact that EDI may have discovered them through
    
    great expenditure of time or labor.        See Feist, 499 U.S. at 347,
    
    111 S.Ct. at 1288; Gates Rubber, 9 F.3d at 842-43 (mathematical
    
    constants used in computer program uncopyrightable).
    
               If the district court decides on remand that StruCAD's
    
    input formats infringe EDI's formats, the court must then reexamine
    
    the StruCAD manual after SSI revises it to avoid infringement.            The
    
    district judge's rulings on other portions of SSI's manual seem
    
    somewhat contradictory, for EDI offers considerable evidence that
    
    SSI's   revised    manual   incorporates   many    of   the    objectionable
    
    features that the district court found infringing in its first
    
    opinion. Nevertheless, it is unnecessary to review the revised SSI
    
    manual until it has been reconsidered on remand.
    
                 IV.   INFRINGEMENT RELATING TO HELP SCREENS
    
               The parties did not thoroughly brief this issue on
    
    appeal.    It is evident, however, that SSI's help screens are not
    
    substantially similar to EDI's copyrighted works. Although in many
    
    cases StruCAD's help screens convey the same ideas and information
    
    as EDI's user manuals, there is little verbatim copying of text.
    
    Naturally, many of EDI's objections to StruCAD's help screens are
    
    grounded in its objections to StruCAD's re-creation of its input
    
    formats, to which the help screens usually refer.                 The final
    
    infringement   determination    relating   to     the   help   screens   must
    
    
    
    
                                       31
    therefore depend upon the court's evaluation of the input formats
    
    on remand.
    
                             V. OBJECTIONS TO SPECIAL
                          MASTER'S REPORT AND PROCEDURES
    
                   Because of the remand, we need not discuss in detail
    
    EDI's objections to the special master's report and procedure.
    
    Should the district court decide to refer any questions on remand
    
    to a special master under Rule 53, it must allow the parties ten
    
    days to file objections to the master's report before rendering its
    
    decision.       This procedure was overlooked before.                    It is also
    
    unclear whether the master strictly complied with the court's order
    
    of reference and whether the master would have been well advised to
    
    offer    the    parties   a   hearing,      as    Fed.   Rule    Civ.   Proc.   53(d)
    
    provides.
    
                               VI. LIABILITY OF GUNTUR
                              IN HIS INDIVIDUAL CAPACITY
    
                   EDI claims that the district court erred in dismissing
    
    the claims against Rao Guntur in his individual capacity. Although
    
    both Guntur and SSI were named as defendants, the district court
    
    entered judgment against SSI alone and dismissed the personal
    
    claims    against    Guntur      because    EDI    had   presented      insufficient
    
    justification for "pierc[ing] the corporate veil."                  785 F.Supp. at
    
    585.     This holding was erroneous.              EDI was not seeking recovery
    
    against Guntur in his capacity as the principal owner of SSI, but
    
    against    Guntur    as    the    individual       who   first    infringed     EDI's
    
    copyright.      Guntur was not acting at the direction of another but
    
    initiated the copying for direct personal gain.                  As this court has
    
    
                                               32
    recognized in the context of trademark infringement, requiring a
    
    piercing of the corporate veil to hold individuals liable would be
    
    putting the cart before the horse.           Mead Johnson & Co. v. Baby's
    
    Formula Service, Inc., 
    402 F.2d 19
    , 23 (5th Cir. 1968) ("the fact
    
    that the persons thus acting are acting for a corporation also, of
    
    course, may make the corporation liable under the doctrine of
    
    respondeat superior.    It does not relieve the individuals of their
    
    responsibility.").     On remand, the district court must apportion
    
    damages between Guntur and SSI.
    
                               VII. TRADE DRESS
                         AND UNFAIR COMPETITION CLAIMS
    
               EDI argues that the district court erred in rejecting
    
    EDI's claim that SSI violated section 43(a) of the Lanham Act, 15
    
    U.S.C. § 1125(a), by infringing the trade dress of SACS.               Trade
    
    dress refers to the image and overall appearance of a product.
    
    Allied Marketing Group, Inc. v. CDL Marketing, Inc., 
    878 F.2d 806
    ,
    
    812 (5th Cir. 1989).    The Lanham Act prohibits passing off goods or
    
    services as those of a competitor by employing substantially
    
    similar trade dress which is likely to confuse consumers as to the
    
    sources of the product.         Blue Bell Bio-Medical v. Cin-Bad, Inc.,
    
    
    864 F.2d 1253
    , 1256 (5th Cir. 1989).             In this circuit, there are
    
    two elements of a trade dress infringement claim. First, the trade
    
    dress of a product may be protected as an unregistered trademark if
    
    it is nonfunctional, distinctive, and has acquired a secondary
    
    meaning.     Second,       a    finding     of   infringement   requires   a
    
    consideration   of   the       likelihood   of   confusion.     Taco   Cabana
    
    International, Inc. v. Two Pesos, Inc., 
    932 F.2d 1113
    , 1117-18 (5th
    
                                          33
    Cir. 1991), aff'd, 
    112 S. Ct. 2753
     (1992).         This court will reverse
    
    these relevant findings of fact only upon a showing of clear error.
    
    Marathon Mfg. Co. v. Enerlite Products Corp., 
    767 F.2d 214
     (5th
    
    Cir. 1985).
    
                The district court's rejection of EDI's trade dress claim
    
    was based on the second stage of the test through its finding that
    
    there was no likelihood of confusion between the two programs.16
    
    We find no clear error in the district court's holding that there
    
    was little likelihood of confusion among the relevant users of the
    
    computer programs at issue.        Testimony at trial established that
    
    both products were targeted at a fairly limited and sophisticated
    
    market.     Moreover, the printed pages of both parties' reports
    
    clearly identify the vendor as EDI or SSI.        No witness testified to
    
    an instance of actual confusion between the products. Finally, the
    
    Lanham Act is grounded in a belief that competitors should not pass
    
    off their products as another's.           Witnesses testified that SSI
    
    explicitly differentiated its product from SACS in its marketing
    
    efforts.      Furthermore, these programs' trade dress is largely
    
    irrelevant    when   sophisticated     users   decide   which   program    to
    
    purchase.      We have no trouble affirming the district court's
    
    finding that there was no likelihood of confusion.
    
    
    
    
          16
                It is an interesting question, unnecessary to reach here, whether
    computer input formats and output reports involving highly technical factual
    reports of engineering data are so inherently functional as not to be
    protectible. Cf. Computer Care v. Service Systems Enterprises, Inc., 
    982 F.2d 1063
     (7th Cir. 1992) (finding trade dress violation in copied format of highly
    expressive computer form letters dealing with automobile repair business).
    
                                         34
                  The same likelihood of confusion standard used for the
    
    Lanham Act also applies to Louisiana's unfair competition statute.
    
    Louisiana World Exposition, Inc. v. Logue, 221 U.S.P.Q., 589, 594
    
    (E.D.La. 1983). We therefore find no error in the district court's
    
    rejection of EDI's state law claim of unfair competition under La.
    
    Rev. Stat. § 51:1405(A).
    
                                 VIII.      DAMAGES
    
                  The final issue is whether the district court erred in
    
    awarding EDI $250,000 in damages for copyright infringement.             With
    
    the following observations, this issue will be revisited on remand.
    
    EDI argues that the district court placed too much emphasis on the
    
    fact that SSI was first to market, apparently by several months, a
    
    program which was designed for a personal computer.             EDI asserts
    
    that the district court used this factor to reduce EDI's damages
    
    from the $1.9 million it claimed it lost in profits over the years
    
    1986 to 1990 to only $250,000.         We agree that several months delay
    
    in bringing a PC version of SACS to market was not sufficient
    
    reason to reduce damages from nearly $2 million to $250,000.             It is
    
    not clear, however, that the district court relied on this factor
    
    alone in reducing damages to the extent it did.           The district court
    
    also cited Fitzgerald Pub. Co. v. Baylor Pub. Co., 
    807 F.2d 1110
    ,
    
    1118 (2d Cir. 1986), which held that actual damages should reflect
    
    the extent to which the market value of the copyrighted work at the
    
    time of the infringement has been injured or destroyed by the
    
    infringement.      The court also indicated at one point that the
    
    extent   of    copying   might   not   justify    fully   compensating    the
    
    
                                           35
    copyright owners. The district court may have determined that some
    
    of the decline in EDI's profits was unrelated to SSI's entry to the
    
    market or that SSI only engaged in minimal copying.   This would be
    
    a permissible finding; whether it was supported by the record we
    
    need not decide.
    
                                CONCLUSION
    
               The district court erred in concluding that EDI's input
    
    formats and output reports, taken as a whole, may not qualify for
    
    copyright protection.    We must therefore REVERSE the district
    
    court's holding that computer/user interfaces in the form of input
    
    and output formats are uncopyrightable.      We also REVERSE its
    
    holding that Guntur is not personally liable.         We REMAND to
    
    determine whether the existence of industry standards precludes
    
    copyright protection and whether there was infringement of the user
    
    interfaces.   On remand the district court must also reexamine
    
    infringement of EDI's user manuals and help screens and apportion
    
    damages between SSI and Guntur.      We AFFIRM the court's other
    
    rulings.
    
               AFFIRMED in part, REVERSED in part and REMANDED.
    
    
    
    
                                    36
    

Document Info

DocketNumber: 92-03444

Filed Date: 7/14/1994

Precedential Status: Precedential

Modified Date: 12/21/2014

Authorities (31)

Baker v. Selden , 101 U.S. 99 ( 1880 )

Feist Publications, Inc. v. Rural Telephone Service Co. , 499 U.S. 340 ( 1991 )

Two Pesos, Inc. v. Taco Cabana, Inc. , 505 U.S. 763 ( 1992 )

cash-dividend-check-corporation-v-leonard-f-davis-and-wayne-layton-doing , 247 F.2d 458 ( 1957 )

Mead Johnson & Company v. Baby's Formula Service, Inc. , 402 F.2d 19 ( 1968 )

O. W. Donald v. Zack Meyer's T. v. Sales and Service, Moore ... , 426 F.2d 1027 ( 1970 )

Marathon Manufacturing Company v. Enerlite Products ... , 767 F.2d 214 ( 1985 )

whelan-associates-inc-v-jaslow-dental-laboratory-inc-dentcom-inc , 797 F.2d 1222 ( 1986 )

fitzgerald-publishing-co-inc-cross-appellee-v-baylor-publishing-co , 807 F.2d 1110 ( 1986 )

plains-cotton-cooperative-association-of-lubbock-texas-v-goodpasture , 807 F.2d 1256 ( 1987 )

Allied Marketing Group, Inc., D/B/A Sweepstakes ... , 878 F.2d 806 ( 1989 )

harper-house-inc-plaintiff-appellee-cross-appellant-v-thomas-nelson , 889 F.2d 197 ( 1989 )

Taco Cabana International, Inc. v. Two Pesos, Inc. , 932 F.2d 1113 ( 1991 )

brown-bag-software-a-california-corporation-formerly-telemarketing , 960 F.2d 1465 ( 1992 )

Atari Games Corp. And Tengen, Inc. v. Nintendo of America ... , 975 F.2d 832 ( 1992 )

Computer Associates International, Inc., Plaintiff-... , 982 F.2d 693 ( 1992 )

Computer Care, Plaintiff-Appellee/cross-Appellant v. ... , 982 F.2d 1063 ( 1992 )

The Gates Rubber Co. v. Bando Chemical Industries, Ltd. , 9 F.3d 823 ( 1993 )

Kepner-Tregoe, Inc. v. Leadership Software, Inc. , 12 F.3d 527 ( 1994 )

Apple Computer, Inc. v. Microsoft Corp. , 799 F. Supp. 1006 ( 1992 )

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